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THE  LIBRARY 

OF 

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OF  CALIFORNIA 

LOS  ANGELES 

SCHOOL  OF  LAW 


1 


V 


TEXT  BOOK 


OF 


THE  LAW  OF  PATENTS 


FOR  INVENTIONS 


BY 

ALBERT  H.  WALKER 

in 

OF  THE  NEW  YORK   BAR 


FIFTH   EDITION 

BY 
JOHN  H.  HILLIARD  AND  EUGENE  EBLE 

OF  THE   NEW  YORK   BAR 


NEW  YORK 
BAKER,  VOORHIS  AND  COMPANY 

1917 


T 

u) 


>ifcp 


Copyright,  1883,  1889,  1S95  and  1904, 

BY 

ALBERT  H.  WALKER. 


Copyright,  1917, 

py 

BAKER,  VOORHIS  &  CO.,  TRUSTEE. 


*0 

PREFACE  TO  THE  FIFTH  EDITION 

S 

In  presenting  the  Fifth  Edition  of  Walker  on  Pat- 
ents, the  editors  have  felt  a  deep  responsibility  toward 
the  imperishable  talent  and  gift  of  analysis  of  the  late 
author,  Albert  H.  Walker,  which  have  made  the  preced- 
ing editions  of  this  work  a  most  valued  text-book  on  the 
subject  of  Patent  Law.  It  would  be  impossible  conscien- 
tiously to  undertake  an  augmentation  of  Mr.  Walker's 
splendid  treatise,  approved  through  many  years  past 
by  the  highest  tribunals  of  the  United  States  without  a 
profound  sense  of  duty  to  the  author,  who  was  inspired 
in  all  his  works  by  a  self-imposed  sense  of  duty  which  he 
felt  he  owed  to  his  brethren  of  the  profession  to  guide 
them  in  the  science  of  this  particular  and  intricate  branch 
of  the  law. 

In  the  succeeding  pages  it  has  been  the  effort  of  the 
editors  to  cite  all  the  cases  involving  questions  of  law 
pertaining  to  patents  and  to  treat  in  the  text  such  of  the 
cases  as  required  special  consideration,  either  because  they 
established  new  doctrines  or  modified  or  enlarged  old 
doctrines. 

The  present  work  takes  up  Federal  decisions  where 
the  Fourth  Edition  concluded.  Approximately  3,000 
reported  cases  have  been  examined  and  from  these  all 
were  selected  which  were  deemed  essential  to  bring  the 
work   to   a   state   of    completeness.     New   rulings,    per- 

iii 


u^~i 


iv  PREFACE   TO  THE   FIFTH   EDITION 

taining  to  the  law  of  recovery  of  damages  and  profits, 
the  rights  of  owners  of  patents  in  the  light  of  the  Sherman 
Anti-Trust  Law,  procedure  under  the  present  Equity 
Rules,  design  patents,  the  enforcement  of  contracts  for 
assignments  of  patent  rights,  etc.,  have  received  especial 
attention. 

The  editors  trust  that  they  have  succeeded  in  con- 
tributing to  prior  treatises  on  the  subject,  something 
which  may  prove  of  value  to  those  who  may  be  in- 
terested in  this  branch  of  the  law  either  professionally  or 
as  students. 

John  H.  Hilliard. 
Eugene  Eble. 

New  York, 
February  1,  1917. 


PREFACE  TO  THE  FIRST  EDITION 

The  Constitution  and  the  statutes  of  the  United  States, 
together  with  twelve  hundred  and  forty-six  Federal  and 
State  judicial  decisions,  are  the  principal  sources  from 
which  the  materials  for  this  text-book  were  drawn.  The 
most  extensive  treatise  heretofore  published  on  the  same 
subject,  was  published  in  1873;  but  it  cited  only  two  hun- 
dred and  eighty  American  cases,  together  with  one  hun- 
dred and  sixty-one  English  adjudications.  The  inade- 
quacy, to  the  needs  of  the  profession,  of  a  treatise  so 
limited  in  scope,  was  clearly  impressed  upon  me  when  I 
entered,  in  1877,  upon  a  somewhat  extended  practice  in 
patent  litigation.  During  the  next  four  years,  I  was  called 
upon  to  argue  several  patent  cases  in  the  Supreme  Court, 
and  many  others  in  many  of  the  Circuit  Courts  of  the 
United  States;  and  in  preparing  those  arguments,  I  was 
forced  to  make  many  laborious  researches,  from  which  a 
complete  text-book  would  have  largely  relieved  me. 
Under  these  circumstances,  I  resolved,  early  in  1881,  to 
undertake  the  production  of  a  treatise  so  much  needed  by 
the  profession.  I  began  writing  on  the  first  day  of  May 
of  that  year,  and  soon  became  so  much  interested  in  the 
work,  that  I  largely  suspended  my  active  practice  of  the 
law,  in  order  to  give  the  book  the  freshest  of  my  efforts, 
and  thus  the  greatest  degree  of  merit  consistent  with  my 
abilities.     The  resulting  treatise  covers  the  entire  field 

v 


VI  PREFACE   TO   THE    FIRST   EDITION 

of  the  patent  laws  of  the  United  States,  as  those  laws  were 
enacted  in  the  statutes  and  developed  in  the  decisions, 
from  the  foundation  of  the  national  government  in  1789, 
down  to  the  first  day  of  September,  1883.  How  accu- 
rately and  well  it  covers  that  field,  is  a  question  which 
belongs  to  the  bar  and  to  the  bench;  and  to  the  generous 
judgment  of  the  bench  and  of  the  bar,  I  commit  the  re- 
sult of  my  long  and  interesting  labor. 

A.  H.  W. 
Hartford,  Connecticut, 
September  26,  1883. 


PREFACE  TO  THE  SECOND  EDITION 

The  patent  laws  of  the  United  States,  as  those  laws  ex- 
ist at  this  beginning  of  the  second  century  of  the  national 
government,  are  stated  and  explained  in  this  edition  of 
this  book.  The  differences  between  it  and  the  first  edi- 
tion, consist  in  omitting  eleven  whole  sections  which  have 
become  obsolete  since  1883,  together  with  parts  of  many 
other  sections  for  the  same  reason;  and  in  inserting  three 
new  sections,  and  many  new  points  in  many  other  sec- 
tions, which  have  been  enacted  in  the  statutes  or  de- 
veloped in  the  decisions  since  that  year;  and  in  so  chang- 
ing or  qualifying  the  statements  of  law  in  many  other 
places  as  to  make  them  conform  to  those  relevant  and 
often  radical  decisions  of  the  courts  which  have  been 
rendered  since  the  first  edition  of  the  book  was  published. 
The  work  of  making  these  changes  began  as  soon  after 
the  publication  of  the  first  edition  as  new  decisions  were 
published,  and  has  continued  from  that  time  to  this,  and 
has  involved  my  careful  study  and  analysis  of  the  more 
than  six  hundred  new  decisions  which  are  incorporated 
with  the  more  than  twelve  hundred  old  ones  in  the  table 
of  cited  cases.  The  generous  judgment  which  has  been 
passed  upon  the  first  edition  of  the  work,  has  been  made 
known  through  numerous  citations  of  the  book  in  the 
decisions  of  the  courts,  and  through  numerous  letters 
received  by  me  from  my  professional  brethren.     Sincere 

vii 


Vlii  PREFACE   TO   THE   SECOND   EDITION 

thanks  for  the  exceeding  generosity  of  that  judgment 
are  now  returned;  and  I  am  thereby  encouraged  to  pro- 
pose a  third  edition  of  the  book  in  1895,  and  a  fourth 
edition  at  the  beginning  of  the  twentieth  century. 

A.  H.  W. 
Hartford,  Connecticut, 
April  30,  1889. 


PREFACE  TO  THE  THIRD  EDITION 

The  Supreme  Court  of  the  United  States  has  lately 
decided  the  last  of  the  patent  cases,  which  were  taken  to 
that  tribunal  before  the  judiciary  act  of  1891  put  a  prac- 
tical period  to  nearly  the  whole  of  its  patent  law  jurisdic- 
tion. At  this  distinguished  stage  of  legal  evolution,  the 
existing  patent  statutes,  together  with  the  thousands  of 
patent  decisions  which  have  been  made  by  the  Supreme 
Court,  and  by  the  lower  Federal  courts  under  its  guidance, 
contain  materials  for  a  nearly  complete  and  a  beautifully 
symmetrical  science  of  the  subject.  To  the  study  of  the 
laws  thus  embodied  and  developed,  I  have  devoted  en- 
thusiastic efforts  for  twenty  years;  and  during  the  last 
eighteen  of  those  years,  I  have  practiced  in  those  laws,  in 
fifteen  of  the  United  States.  This  edition  of  my  book  is  a 
result  of  that  experience,  and  of  my  careful  revision  and 
enlargement  of  the  second  edition,  into  accurate  conform- 
ity with  the  present  law.  The  differences  between  this 
edition  and  the  second,  are  far  more  numerous  and  im- 
portant than  those  between  the  second  and  the  first. 
No  book  so  old  as  the  second  edition,  nor  even  one  a  year 
younger,  can  be  a  reliable  guide  through  the  patent  laws 
of  to-day;  but  it  is  not  probable  that  any  development 
of  those  laws  during  any  six  years  of  the  future,  until 
Congress  enacts  a  new  system  of  patent  statutes,  will 
be  nearly  so  extensive  or  important,  as  that  of  the  six 

ix 


x  PREFACE  TO   THE   THIRD   EDITION 

years  which  have  passed  since  L889.  Excepl  in  the  event 
of  sucli  an  enactment,  a  necessity  for  another  edition  of 
this  hook,  cannot  now  he  foreseen;  and  therefore  I  present 
this  edition  to  the  bench  and  to  the  bar,  as  probably  my 
final  contribution  to  the  literature  of  the  patent  law. 

A.  H.  W. 
Hartford,  Connecticut, 
November  16,  1895. 


PREFACE  TO  THE  FOURTH  EDITION 

Congress  has  enacted  six  statutes  amending  the  patent 
laws,  and  the  courts  have  decided  two  thousand  patent 
cases,  since  the  third  edition  of  this  book  was  published 
in  1895.  Two-thirds  of  those  decisions  were  confined 
to  questions  of  fact,  the  judicial  answers  to  which  con- 
tain no  new  material  for  a  law  book.  But  nearly  seven 
hundred  of  those  cases  were  found,  upon  careful  examina- 
tion by  me,  to  contain  contributions  to  the  patent  law. 
Those  contributions,  together  with  the  amendments 
made  by  the  six  statutes,  have  been  collected  by  me,  and 
have  been  written  by  my  own  hand,  into  this  text-book, 
in  their  proper  places.  I  have  now  conducted  one  side 
or  the  other  of  nearly  three  hundred  patent  litigations 
in  most  of  the  States  of  the  Union,  and  I  have  delivered 
many  courses  of  lectures  on  the  patent  laws,  in  Cornell 
University,  and  in  the  University  of  Michigan.  These 
labors,  and  the  writing,  during  twenty-three  years,  of 
four  editions  of  this  text-book,  and  the  studies  incident 
to  the  litigations,  the  lectures  and  the  authorship,  have 
made  me  well  acquainted  with  the  patent  laws  of  the 
United  States.  The  analysis  and  arrangement  of  those 
laws,  in  the  first  edition  of  my  book,  have  proved  to  be 
suitable,  and  will  probably  prove  to  be  permanent;  but 
the  second  and  third  editions  were  much  enriched  in 
detail,   by   hundreds   of   new  points   collected   from   the 

xi 


xii  PREFACE  TO  THE    FOURTH   EDITION 

sources  of  the  law;  and  the  fourth  edition  contains  more 
than  six  hundred  new  and  material  differences  from  the 
third.  Future  years  will  bring  still  further  evolution 
of  the  patent  laws;  and  I  hope  that  future  editions  of 
this  book,  written  by  my  hand,  or  by  the  hands  of  others, 
will  formulate  that  evolution  from  period  to  period. 

A.  H.  W. 

Park  Row  Building, 
Manhattan,  N.  Y., 

February  1,  1904. 


TABLE  OF  CONTENTS 


CHAPTER  I 


The  Subjects  of  Patents Pages  1-19 


1.  Constitutional  and  statutory 

foundation   of   the   patent 
laws. 

2.  Patent  law  meaning  of  the 

word  "discovery." 

3.  Patent  law  meaning  of  the 

word  "art." 

7.  Difference  between  a  "proc- 

ess" and  a  "principle"  in- 
quired into. 

8.  Illustrated  by  the  case  of  Mc- 

Clurg  v.  Kingsland. 

9.  Illustrated    by    the    case    of 

O'Reilly  v.  Morse. 

10.  Illustrated    by    the    case    of 

Mowry  v.  Whitney. 

11.  Illustrated    by    the    case    of 

Tilghman  v.  Proctor. 
11a.  Illustrated  by  the  Telephone 
Cases. 


12.  Illustrated  by  the  five  cases 

when  compared. 

13.  Illustrated  by  the  five  cases 

when  contrasted. 

14.  Deduced  from  the  five  cases 

as    compared      and    con- 
trasted. 

15.  Illustrated    by    the    eighth 

claim  of  Morse. 

16.  Machines,  and  improvements 

of  machines. 

17.  Manufactures. 

18.  Compositions  of  matter. 

19.  Distinction      between     ma- 

chines,  manufactures,  and 
compositions  of  matter. 

20.  Designs. 

21.  Design  patents,  under  stat- 

utes earlier  than  1873. 

22.  Ornament  and  utility. 


CHAPTER  II 


Invention Pages  20-65 

23.  Invention  necessary  to  pat-      25.  Mere  skill  is  not  invention. 


entability. 
24.  Many  negative  rules,  but  no 
affirmative  rule,  for  deter- 
mining the  presence  or  ab- 
sence of  invention. 


26.  Circumstances  indicating  dif- 

ference between  invention 
and  skill. 

27.  Excellence  of  workmanship  is 

not  invention. 

xiii 


XIV 


CONTENTS 


28.  Substitution   of  materials  is 

not  invention. 

29.  Exceptions  to  the  last  rule. 

30.  Enlargement    is    not    inven- 

tion. 

31.  Change  of  degree  is  not  inven- 

tion. 
31a.  Exception  to  the  last  rule. 

32.  Aggregation    is    not    inven- 

tion. 

33.  Simultaneousness  of  action  is 

not    necessary    to    inven- 
tion. 

34.  Duplication  is  not  generally 

invention. 

35.  Omission  is  not  generally  in- 

vention. 

36.  Substitution  of  equivalents  is 

not  generally  invention. 

37.  New     combination     without 

new  mode  of  operation,  is 
not  invention. 

38.  Using  old  thing  for  new  and 

analogous   purpose   is   not 
invention. 


39.  Cases  to  which  the  last  rule 

does  not  apply. 

40.  Doubts  relevant  to  invention, 

when  otherwise  insoluble, 
are  solved  by  ascertaining 
comparative  utility. 

41.  Form. 

41a.  Proportion. 

42.  Questions    of    invention    are 

questions  of  fact. 

43.  Questions  of  invention  are  in- 

vestigated in  the  light  of 
the  state  of  the  prior  art. 

44.  Joint  and  sole  inventions. 

45.  How  made. 

46.  How  distinguished. 

47.  Suggestions  to  an  inventor. 

48.  Information  sought  by  an  in- 

ventor. 

49.  Mechanical  skill  not  necessary 

to  invention. 

50.  Sole  patent  to  one  joint  in- 

ventor is  void. 

51.  Joint  patent  to  sole  inventor 

and  another  is  void. 


CHAPTER  III 


Novelty Pages  66-96 


52.  Novelty  necessary  to  patent- 

ability. 

53.  Novelty  defined. 

54.  Not     negatived     by     prior 

knowledge    or    use    in    a 
foreign  country. 

55.  Not  negatived  by  any  private 

patent  granted  in  a  foreign 
country. 

56.  Prior  printed  publications. 


57.  Fullness  of  prior  patents  and 
printed  publications. 

Novelty  not  negatived  by  any 
prior  abandoned  applica- 
tion. 

Qualification  of  the  last  rule. 

Successful  prior  applications. 
61.  Novelty  not  negatived  by  any 
unpublished  drawing,  or 
prior  model. 


58 


59 
60 


CONTENTS 


XV 


62.  Novelty    not    negatived    by 

anything  substantially  dif- 
ferent. 

63.  Abandoned  experiments. 

64.  Novelty  in  cases  of  designs. 

65.  Novelty    not    negatived    by 

anything  apparently  simi- 
lar, but  comparatively  use- 
less. 

66.  Novelty  not  negatived  by  an- 

tiquity of  parts. 

67.  Novelty    not    negatived    by 

prior  accidental  and  not 
recognized  production. 

68.  Novelty    not    negatived    by 

anything  neither  designed, 
nor  apparently  adapted, 
nor  actually  used  for  the 
same  purpose. 


69.  Comparative  dates. 

70.  Dates  of  patented  inventions. 

71.  Novelty  is  negatived  by  one 

instance  of  prior  knowledge 
and  use  in  this  country. 

72.  Novelty  is  negatived  by  prior 

existence  and  knowledge  in 
this  country. 

73.  Inventor's  lack  of  knowledge 

of    anticipating    matter   is 
immaterial. 

74.  Old  thing  derived  from  new 

source,  is  not  novel. 

75.  Questions  of  novelty  are  ques- 

tions of  fact. 

76.  Burden  of  proof  relevant  to 

novelty,  and  want  of  nov- 
elty. 


CHAPTER   IV 


Utility Pages  97-103 


77.  Utility  necessary  to  patent- 

ability. 

78.  Utility  is  negatived  by  lack  of 

function. 

79.  Perfection   not  necessary  to 

utility. 

80.  Beauty  has  utility. 

81.  Utility    is    negatived    where 

function  is  evil. 

82.  Functioas    which    sometimes 


work  evil,  and  sometimes 
work  good. 

83.  Functions  thought  by  some 

to  be  good,  and  by  others  to 
be  bad. 

84.  Good    functions    in    wrong 

places. 

85.  Doubts  relevant  to  utility  to 

be  solved  against  infringers. 


XVI 


CONTENTS 


CHAPTER  V 


Abandonment Pages  104-127 


86.  The  several  sorts  of  abandon- 

ment. 

87.  Abandonment  of  inventions. 

88.  Actual   abandonment  of   in- 

ventions. 

89.  Actual  abandonment  by  ex- 

press declaration. 

90.  Actual  abandonment  by  for- 

mal disclaimer. 

91.  Actual  abandonment  result- 

ing from  laches  before  ap- 
plication. 

92.  Actual  abandonment  result- 

ing from  laches  after  ap- 
plication and  before  issue  of 
letters  patent. 

93.  Constructive      abandonment 

before  application. 

94.  "Public  use,"  defined  and  de- 

lineated. 

95.  Experimental  use. 

96.  "On  sale,"  delineated  and  de- 

fined. 

97.  Sale  of  inchoate  right  to  a 

patent. 

98.  Degree     of     identity    neces- 


sarily involved  between  the 
thing  constructively  aban- 
doned and  the  thing  pat- 
ented. 

99.  Making,  works  no  construc- 

tive abandonment. 

100.  Public  knowledge,  works  no 

constructive  abandonment . 

101 .  Public  use  or  sale  in  a  foreign 

country. 

103.  Constructive    abandonment 

after  application,  and  be- 
fore issue  of  letters  patent. 

104.  Rules  of  constructive  aban- 

donment are  inflexible. 
104a.  Constructive  abandonment 
in  four  new  classes  of  cases. 

105.  Surrender  of  letters  patent. 

106.  Abandonment  of  invention 

after  letters  patent,  un- 
known to  the  law. 

107.  Acquiescence  in  unlicensed 

use  of  patented  invention. 

108.  Questions   of   abandonment 

are  questions  of  fact. 


CHAPTER  VI 


Applications 

Pages  128-180 

109.  Constituents  of  applications 

for  patents. 

110.  The  petition. 

111.  Constituents    of    specifica- 

tions. 

112. 
113. 

114. 

The  preamble. 

The  general  statement  of  the 
invention. 

The  description  of  the  draw- 
ings. 

CONTENTS 


XVI 1 


115.  The  detailed  description  of 

the  invention. 

116.  The  claim  or  claims. 

117.  Claims  in  machine  patents. 
117a.  Methods  of  specifying  parts 

in  claims. 

118.  Claims  in  patents  for  manu- 

factures. 

1 19.  Claims  in  patents  for  compo- 

sitions of  matter. 

120.  Claims  in  process  patents. 
120a.  Claims  in  design  patents. 

121.  The  signatures. 

122.  The  form  of  the  oath. 

123.  The  constituents  of  the  oath. 

124.  Affirmations. 

125.  The  Patent  Office  fees. 

126.  Drawings. 

127.  Models. 

128.  Specimens   of   compositions 

of  matter. 

129.  Dates  of  applications. 
129a.  The  register  of  Patent  Of- 
fice attorneys. 

130.  The  examination  by  the  Pat- 

ent Office. 

131.  Notification  of  rejection. 

132.  Appeals  in  the  Patent  Office. 

133.  Appeals  to  the  Court  of  Ap- 

peals  of   the   District   of 
Columbia. 

134.  Bills  in  equity  to  compel  the 

Commissioner     to    grant 
patents. 


135.  Amendments     of     applica- 

tions. 

136.  The  foundation  of  the  right 

of  amendment. 

137.  When    an    applicant    may 

amend. 

138.  How     an     applicant     may 

amend. 

139.  When    an    applicant    must 

amend. 

140.  Interferences. 

141.  Interferences. 
141a.  Interferences. 
1416.  Interferences. 
141c.  Interferences. 

141a1.  Appeals         in        interfer- 
ences. 

142.  Decisions    in    interferences 

are  not  conclusive. 

143.  Caveats. 

144.  Appeals  from  decrees  on  bills 

in  equity. 

145.  Abandonment    of    applica- 

tions. 

146.  Constructive    abandonment 

of  applications. 

147.  Constructive    abandonment 

of  applications  working 
and  not  working  construc- 
tive abandonment  of  in- 
ventions. 

148.  Commissioner's    actions    on 

prerequisites  to  applica- 
tions. 


Will 


CONTENTS 


CHAPTER  VII 


Letters  Patent Pages  181-262 


140.  No  exclusive'  right  to  in- 
ventions at  common  law. 

1 49a .  Exclusive  possession  by  se- 
crecy. 

150.  Constitutional         exclusive 

right  to  inventions  in  the 
United  States. 

151.  Patents  are  property. 

152.  Dignity  of  property  in  pat- 

ents. 
152a.  Continuation  of  the  same 
subject. 

153.  Patents     are     not     odious 

monopolies. 

155.  Patent    rights    are    beyond 

State  interference. 

156.  Patent  rights  are  not  sub- 

ject to  common-law  execu- 
tions, but  may  be  sub- 
jected to  creditors'  bills  in 
equity. 

157.  Patent  rights  are  as  exclu- 

sive of  the  government,  as 
they  are  of  any  citizen. 

158.  Patents  do  not  cover  speci- 

mens purchased  of  the  in- 
ventor, or  made  with  his 
knowledge  and  consent, 
before  application  there- 
for. 

159.  The  foregoing  rule  has  no 

application  to  patents  for 
processes. 

160.  Territorial  scope  of  United 

States  patents. 


161.  Operation  of  United  States 

patents  on  the  decks  of 
ships. 

162.  Duration  of  patents. 

163.  Duration   of   United   States 

patents  for  inventions  first 
patented  in  a  foreign  coun- 
try, according  to  the  stat- 
ute of  1870. 

170.  Beginning  of  the  terms  of 

United  States  patents. 

171.  To  whom  letters  patent  are 

granted  by  the  govern- 
ment. 

172.  Letters  patent  as  documents. 

173.  The  specification. 

174.  The  description. 

175.  The  description. 

176.  The  claim  or  claims. 

177.  The  claim  or  claims. 

177a.  Generic  claims  and  specific 
claims. 

178.  Particularity  in  descriptions 

and  claims,  are  conditions 
precedent  to  validity. 

179.  Questions  of  sufficiency   of 

particularity  of  descrip- 
tions and  claims,  are  ques- 
tions of  fact,  and  not  of 
law. 

180.  Plurality  of  inventions  in  a 

single  letters  patent. 
180a.  Double  patenting. 

181.  Construction  of  letters  pat- 

ent. 


CONTEXTS 


XIX 


182.  Claims  to  be  construed  in  the 

light  of  descriptions. 
182a.  Construction      of      claims 
which    employ    reference 
letters  or  numerals. 

183.  Construction    of    functional 

claims. 

184.  Claims  construed  in  the  light 

of  the  prior  state  of  the 
same  art. 
184a.  The   prior   state    of    other 
arts. 

185.  Proper    liberality    of    con- 

struction. 
185a.  Breadth  of  construction  as 
governed  by  extent  of  use 
of  patent. 

186.  Proper  strictness  of  construc- 

tion. 


186a.  Construction  in  the  light  of 
acquiescence  on  part  of 
owner  of  patent. 

187.  Construction  in  the  light  of 

application  papers. 
187a.  Patent  Office  limitations. 

188.  Construction  in  the  light  of 

contemporaneous        stat- 
utes. 

189.  Questions     of     construction 

are  questions  of  law,  and 
not  of  fact. 

190.  Letters  patent  presumed  to 

be  for  same  invention  as 
the  application  therefor. 

191.  Letters  patent  are  construc- 

tive notice  of  their  con- 
tents to  every  person. 
191a.  Taxation  of  patents. 


CHAPTER  VIII 


Disclaimers Pages  263-277 


192.  Statutory    authorization    of 

disclaimers. 

193.  Statutory  prescriptions,  rele- 

vant to  disclaimers. 

194.  Errors    which    justify    dis- 

claimers. 

195.  Mistakes  of  fact,  relevant  to 

novelty. 

196.  Mistakes  of  law,  relevant  to 

invention. 

197.  Claims  void  for  want  of  util- 

ity. 

198.  Proper  disclaimers. 

199.  Improper  disclaimers. 

200.  Immaterial  parts. 

201.  Reissue  claims. 


202.  Fraudulent  or  deceptive  in- 

tention. 

203.  Effect  of  unreasonable  delay 

to  file  a  disclaimer. 

204.  Beginning    of    unreasonable 

delay  to  file  a  disclaimer. 

205.  Costs,  where  a  necessary  dis- 

claimer has  not  been  filed. 

206.  Extent  of  disclaimant's  in- 

terest. 

207.  Construction  of  letters  pat- 

ent after  a  disclaimer. 

208.  Disclaimers     filed     pending 

litigation. 

209.  Disclaimers  required  by  ju- 

dicial decisions. 


XX 


CONTENTS 


CHAPTER  IX 

Reissues Pages  278-308 


210.  Beginning  of  the  history  of 

reissues. 

211.  First  statute  providing  for 

reissues,  1832. 

212.  Reissues  under  the  Patent 

Act  of  1836. 

213.  Amendments  made  in  the  re- 

issue law  by  the  Patent 
Act  of  1837. 

214.  Reissues  under  the  Patent 

Act  of  1870. 

215.  Reissues  under  the  Revised 

Statutes. 

216.  Subjects  of  reissues. 
216a.  Narrowed  reissues. 

217.  The   words   "specification," 

"defective,"  and  "insuffi- 
cient" defined. 

218.  Faults    which     justify    re- 

issues. 
218a.  Reissues  correcting  patents 
without     changing     their 
scopes. 

219.  Broadened  reissues. 

220.  Inadvertence,  accident,  and 

mistake. 

221.  Question  of  the  conclusive- 

ness of  the  Commissioner's 
decision  relevant  to  exist- 
ence of  reissuable  faults, 
and  relevant  to  the  exist- 
tence  of  inadvertence,  ac- 
cident, or  mistake. 
226.  The  doctrine  of  the  case  of 
Miller  v.  Brass  Co. 


227.  The  length  of  the  delay  con- 
templated by  the  doc- 
trine of  Miller  v.  Brass 
Co. 

229.  The  statute  relevant  to  two 

years'  prior  use  or  sale  has 
no  application  to  reissues 
as  such. 

230.  Surrender  of  patent. 

231.  Effect  of  surrender  with,  and 

also  without,  reissue. 

232.  Reissues  of  reissued  patents 

and  of  extended  patents, 
but  not  of  expired  patents, 
are  proper. 

233.  Same  invention. 

239.  "Where    there    is    neither 

model  nor  drawing." 

240.  New  matter. 

242.  Reissues  must  be  for  same 

invention  as  prior  reissues, 
and  also  for  same  inven- 
tion as  originals. 

243.  Legal  presumption  of  same- 

ness of  invention. 

244.  Omission,  as  it  affects  same- 

ness of  invention. 

245.  Reissues    for    sub-combina- 

tions. 

246.  Reissues     for      single     de- 

vices. 

247.  Reissues     as     affected     by 

substitution  of  equiva- 
lents. 

248.  Reissues  entitled  to  a  liberal 

construction. 


CONTENTS 


XXI 


249.  Reissued    patents    may    be 

valid   as  to  some  claims 
while  void  as  to  others. 

250.  Executors,     administrators, 

and  assigns  may  procure 
reissues. 

251.  One  of  several  executors  may 

procure  a  reissue. 


252.  Rights   of  assignees  in   re- 

issues. 

253.  The  rights  of  grantees  in  re- 

issues. 

254.  The  legal  effect  of  reissued 

patents. 


CHAPTER    X 


Extensions Pages  309-321 


255.  Constitutional  foundation  of 

extensions. 

256.  Congressional  extensions. 

257.  Mode  of  Congressional  ex- 

tension. 

Effect  of  Congressional  ex- 
tensions. 

Patent  Office  extensions. 

Statutory  foundation  of  Pat- 
ent Office  extensions. 

Who  might  apply  for  Patent 
Office  extensions. 

Points  of  time  whereon  Pat- 
ent Office  extensions  were 
grantable. 

Patent  Office  extension 
might  be  granted  to  an 
inventor-patentee,  even  if 
he  had  parted  with  all 
interest  in  the  first  term 
of  his  patent. 
264.  Patent  Office  extensions 
grantable  only  where  in- 
ventors would  possess,  or 


258. 

259. 
260. 

261. 

262. 


263. 


at  least  participate  in, 
the  benefit  thereof. 

265.  Patent  Office  extension,  how 

effectuated. 

266.  Force  of  the  Commissioner's 

decision  in  extension  cases. 

267.  Facts  which  justified  exten- 

sions. 

268.  Proceedings  preliminary  to 

extensions. 

269.  Remedy  for  fraud  in  procur- 

ing or  in  granting  exten- 
sions. 

270.  "The  benefit  of  the  exten- 

sion of  a  patent  shall  ex- 
tend to  the  assignees  and 
grantees  of  the  right  to  use 
the  thing  patented,  to  the 
extent  of  their  interest 
therein." 

271.  Adjudged    meaning    of    the 

statute  quoted  in  the  last 
section. 


XX 11 


CONTENTS 


CHAPTER  XI 


Title Pages  322-35.r> 


272.  The  nature  of  titles,  and  the 

methods  of  their  acquisi- 
tion. 

273.  Title  by  occupancy. 

274.  Title  by  assignment. 

274a.  Special  tenures  and  incom- 
plete estates. 

275.  Characteristics,   authentica- 

tion, and  effect  of  assign- 
ments. 

276.  Consideration     for     assign- 

ments. 
276a.  Assignments  of    future  in- 
ventions. 

277.  Assignments  of  rights  of  ac- 

tion   for    past    infringe- 
ments. 

278.  Construction  of  assignments. 

279.  Reformation  of  assignments. 

280.  Assignment  of  extensions. 

281.  Recording  and  notice. 


282.  Warranty  of  title. 

283.  No    implied     warranty     of 

validity. 

284.  Express  warranties  of  valid- 

ity. 

285.  Equitable   titles;    how    cre- 

ated. 

286.  Equitable        titles;        how 

treated. 

287.  Title  by  grant. 

288.  Extra-territorial  rights  con- 

veyed by  grants. 
288a.  Mortgages  of  patents. 

289.  Title  by  creditor's  bill. 

290.  Title  by  bankruptcy. 

291.  Title  by  death. 

292.  Tenancy  in  common. 

294.  Rights  of  tenants  in  common 

as  against  each  other. 

295.  Partition,    and   removal    of 

clouds. 


CHAPTER  XII 


Licenses 

296.  Licenses    defined    and 

•  scribed. 

297.  Express   licenses   to   make, 

with  implied  leave  to  use, 
or  implied  leave  to  sell  the 
things  made. 

298.  Express  licenses  to  use,  with 

implied  leave  to  make  for 
use. 


Pages  356-397 


de-  299.  Express  licenses  to  sell,  with 
implied  leave  to  the  ven- 
dees to  use  and  to  sell  the 
things  they  purchase. 

300.  Licenses  to  make  and  use, 
without  implied  leave  to 
sell. 

301.  Licenses  to  make  and  sell,  or 
to  use  and  sell,  with  im- 


CONTENTS 


XX111 


plied  leave  to  the  vendees 
to  use  and  to  sell  the  ar- 
ticles they  buy. 

302.  Express  licenses  so  restricted 

as  not  to  convey  implied 
rights. 
302a.  Implied  licenses  to  repair  or 
improve. 

303.  Written  and  oral  licenses. 

304.  Recording  and  notice. 

305.  Licenses  given  by  one  of  sev- 

eral owners  in  common, 
and  licenses  given  to  one 
of  several  joint  users. 

306.  Construction  of  licenses. 

307.  Warranty  of  validity  of  pat- 

ent, and  eviction. 
307a.  Warranty  of  validity  of  li- 
cense. 

308.  Clauses  of  forfeiture. 

309.  Effects  of  forfeiture. 

310.  Assignability  of  licenses. 

311.  Purely  implied  licenses. 


312.  Implied   licenses  from  con- 

duct, and  first  by  acquies- 
cence. 

313.  Implied  license  from  conduct 

by  estoppel. 
313a.   Implied  license  from  em- 
ployment of  inventor. 

314.  Implied  license  from  actual 

recovery  of  a  full  license 

fee. 
314a.  License  restrictions  on  the 

use  and  resale  of  patented 

articles. 
3146.  The  patent  monopoly  an 

aggregation  of  rights. 
314c.  Specific  decisions  considered. 
314a7.  The  same  subject  continued. 
314e.  The  same  subject  continued. 
314/.  The  same  subject  continued. 
314a.  The  same  subject  continued. 
314/j.  The  same  subject  continued. 
314i.  The  Clayton  Act. 
314 j.  The  Clayton  Act  construed. 


CHAPTER  XIII 


Inierfering  Patents Pages  398-405 


315.  Characteristics  and  causes  of 

interfering  patents. 

316.  Actions  in  equity  between 

interfering  patents. 

317.  The  questions  and  issues  in 

such  actions. 


318.  The  evidence   in  such   ac- 

tions. 

319.  Injunctions  in  such  actions. 

320.  The  proper  decrees  in  such 

actions. 


xxiv  CONTENTS 


CHAPTER  XIV 

Repeal  of  Patents Pages  406-408 

321.  Patents  obtained  by  fraud,  peal  patents  so  obtained  or 

or  granted  by  mistake.  so  granted. 

322.  Jurisdiction  of  equity  to  re-      323.  Practice  in  such  cases. 

CHAPTER  XV 

Qui  tam  Actions Pages  409-416 

324.  Qui  tam  actions,  defined  and      329.  The  amount  of  the  recover- 

described  as  they  exist  in  able  penalty. 

the  patent  laws.  330.  The  parties  in  qui  tam  patent 

325.  The  wrongs  which  are  the  cases. 

foundations   of   such   ac-      331.  The  forum  for  qui  tam  patent 
tions.  actions. 

326.  The  first  two  of  those  three      332.  The  form  of  the  suit,  and  the 

classes  of  wrongs.  requisites  of  a  declaration, 

327.  The    third    of    those    three  in  such  an  action. 

classes  of  wrongs.  333.  Injunctions  to  restrain  the 

328.  Wrongs  of  either  class  are  commission  of  wrongs  of 

completed   when   the   ar-  either    of    the    first    two 

tides  are  illegally  marked,  classes, 

without    any    subsequent  334.  Appeals  in  qui  tam  patent 

using  or  selling.  cases. 


CHAPTER  XVI 

Infringement Pages  417-464 

335.  Infringement  of  process  pat-      337.  Illustrated  by  the   case  of 

ents,    illustrated    by    the  Cochrane  v.  Deener. 

case  of  Tilghman  v.  Proc-  338.  Equivalents  in  processes  and 

tor.  additions  thereto. 

336.  Illustrated   by   the   case   of  339.  Infringement  of  patents  for 

Mowry  v.  Whitney.  machines  or  manufactures. 


CONTENTS 


XXV 


340.  Comparative  results. 

341.  Comparative  modes  of  op- 

eration. 

342.  Comparative  modes  of  op- 

eration as  illustrated  by 
the  case  of  the  Cawood 
patent. 

343.  As  illustrated  by  the  Driven- 

Well  cases. 

344.  As     illustrated     by     Blan- 

chard's  patent  for  turning 
irregular  forms. 

345.  As  illustrated  by  Hay  den's 

Brass-Kettle  machine. 

346.  As  illustrated  by  the  case  of 

Burr  v.  Duryee. 
346a.  As  illustrated  by  The  Elec- 
tric Signal  case. 

347.  Addition. 

348.  Transposition  of  parts. 

349.  Omission. 

350.  Substitution  of  equivalents. 

352.  The  test  of  sameness  of  func- 

tion. 

353.  The  test  of  substantial  same- 

ness of  way  of  perform- 
ance. 

354.  Question  of  the  necessity  of 

age  in  equivalents. 
359.  Primary  and  secondary  in- 
ventions in  respect  of  the 
doctrine  of  equivalents. 

362.  Review  of  the  matters  con- 

sidered in  Section  359. 

363.  Changes  of  form  considered 

in  respect  of  questions  of 
infringement. 


364.  Nature  of  use  considered  in 

respect  of  questions  of 
infringement. 

365.  Subject  of  the  last  section 

illustrated  by  the  case  of 
Ives  v.  Hamilton. 

366.  Illustrated   by  the   case  of 

Morey  v.  Lock  wood. 

367.  Illustrated  by  the  case  of  the 

American  Diamond  Rock 
Boring  Co.  v.  The  Sullivan 
Machine  Co. 

368.  Illustrated   by  the   case  of 

Elizabeth     v.     Pavement 
Co. 
368a.  Evasion  of  the  patent  by 
changes  of  form. 

369.  Infringement  of  patents  for 

compositions  of  matter. 

370.  Substitution  of  ingredients. 
370a.  Equivalent,  and  non-equiv- 
alent, ingredients. 

371.  Substitution  of  ingredients, 

as  illustrated  by  the  Giant- 
Powder  cases. 

372.  Disclaimers     of     particular 

equivalents. 

373.  Changes    of    proportion    in 

compositions  of  matter. 

375.  Infringements  of  patents  for 

designs. 

376.  Comparative    utility    as    a 

criterion  of  infringement. 

377.  Knowledge  of  a  patent  by  an 

infringer,  not  a  necessary 
element  in  its  infringe- 
ment. 


XXVI 


CONTENTS 


CHAPTER  XVII 


Courts,  Parties  and  Causes Pages  465-512 


378.  Introductory  explanation. 

379.  Jurisdiction  of  United  States 

courts  of  first  resort  in  pat- 
ent cases. 

380.  Non-jurisdiction     of     State 

courts  in  patent  cases. 

388.  Jurisdiction  of  State  courts 

over  controversies  grow- 
ing out  of  contracts  rele- 
vant to  patents. 

389.  Jurisdiction     of     individual 

United  States  courts  of 
first  resort  in  patent  cases. 

390.  Qualification  of  the  rule  of 

the  last  section. 

391.  Jurisdiction  of  the  Court  of 

Claims. 

392.  Absence    of   jurisdiction    of 

the  Court  of  Claims  over 
causes  of  action  based  on 
unauthorized  making,  us- 
ing, or  selling  by  the 
United  States  Govern- 
ment of  specimens  of  a 
patented  process  or  thing. 

393.  Presence   of  jurisdiction   of 

United  States  Circuit 
Courts  over  actions 
brought  against  agents  of 
the  United  States  Gov- 
ernment, and  based  on 
unauthorized  making,  us- 
ing, or  selling,  by  those 
agents,  on  behalf  of  the 
Government,  of  specimens 


of  a  patented  process  or 
thing. 

394.  Who  may  be  a  plaintiff  or 

complainant  in  a  patent 
action. 

395.  Who    may    be    plaint  iff    or 

complainant  in  an  act  inn 
based  on  an  assigned  ac- 
crued right  of  action  for 
infringement. 

396.  Executors   and   administra- 

tors as  plaintiffs  and  com- 
plainants. 

397.  Assignees  of  executors  or  ad- 

ministrators as  plaintiffs 
and  complainants. 

398.  Attorneys  in  fact  cannot  be 

nominal  plaintiffs  or  com- 
plainants. 

399.  Owners  in  common  as  joint 

plaintiffs  or  complainants. 

400.  Licensees  cannot  be  nominal 

plaintiffs,  nor  sole  nominal 
complainants. 

401.  Who  may  be  made  a  defend- 

ant in  a  patent  action. 

402.  Minors  and  married  women 

as  defendants. 

403.  Agents,  salesmen,  and  other 

employed  persons,  as  de- 
fendants. 

404.  Employers  as  defendants. 

405.  Persons  as  defendants  who 

have  caused  others  to  in- 
fringe. 


CONTENTS 


XXV11 


406.  Joint  infringers  as  defend- 

ants. 

407.  Contributory  infringement. 

408.  Partners  as  defendants. 

409.  Private  corporations  as  de- 

fendants. 

410.  Officers,  directors,  and  stock- 

holders of  corporations  as 
defendants. 

411.  The  same  subject  continued. 

412.  Stockholders     of      corpora- 

tions. 

413.  Officers  of  corporations. 

414.  Directors  of  corporations. 


415.  Statutory  liability  of  officers, 

directors,  and  stockhold- 
ers of  corporations. 

416.  Consolidated  corporations  as 

defendants  in  actions 
based  on  infringements 
committed  by  their  con- 
stituent corporations. 

417.  Causes  of  action  based  on  a 

plurality  of  patents  or  on 
both  terms  of  an  extended 
patent,  or  on  a  patent  and 
a  trade-mark. 


CHAPTER  XVIII 

Actions  at  Law Pages  513-612 


421.  Forms    of    actions    for    in- 

fringement. 
421a.    Actions    for    fraudulently 
procuring  patent. 

422.  Declarations  in  trespass  on 

the  case. 

423.  The  statement  of  the  right 

of  action,  in  respect  of  the 
inventor. 

424.  In  respect  of  the  novelty  and 

utility  of  the  invention. 

425.  In  respect  of  the  absence  of 

public  use  or  sale  more 
than  two  years  before  ap- 
plication for  a  patent. 

426.  In  respect  of  the  patentee, 

where  he  is  another  than 
the  inventor. 

427.  In  respect  of  the  application 

for  the  patent. 

428.  In    respect    to    the    letters 

patent. 


429.  In  respect  of  a  reissue. 

430.  In  respect  of  a  disclaimer. 

431.  In  respect  of  an  extension. 

432.  In  respect  of  the  plaintiff's 

title. 

433.  In    respect    of    profert    of 

title. 
433a.  In  respect  of  marking  "pat- 
ented." 

434.  In  respect  of  infringement. 

435.  In  respect  of  the  time  of  in- 

fringement. 

436.  In  respect  of  the  damages. 

437.  The  conclusion  of  the  dec- 

laration. 

438.  Substantial   and    not   tech- 

nical accuracy  required  in 
declarations. 

439.  Dilatory  pleas. 

440.  Twenty-eight  defences 

pleadable  in  bar  in  patent 
actions. 


XXV111 


CONTENTS 


ill.  The    twenty-eighl    defences 

reviewed  in  respect  of 
their  natures  and  effects. 

112.  Special  pleading. 

143.  The  general  issue  accom- 
panied by  a  statutory  no- 
tice of  special  matter. 

111.  Notices  of  special  matter. 

11.").  Defences  based  <>n  facts  of 
which  courts  take  judi- 
cial notice,  need  not  be 
pleaded. 

446.  The    first   and    second    de- 

fences. 

447.  The  third  defence. 

448.  The  fourth  defence. 

449.  The  fifth  and  sixth  defences. 

450.  The  seventh  defence. 

451.  The  eighth  defence. 

452.  The    ninth    and    tenth    de- 

fences. 

453.  The  eleventh  defence. 

454.  The  twelfth  defence. 

455.  The  thirteenth  defence. 

456.  The  fourteenth  defence. 

457.  The  fifteenth  defence. 

458.  The  sixteenth  defence. 

459.  The  seventeenth  defence. 

460.  The  eighteenth  defence. 

461.  The  nineteenth  defence. 

462.  The  twentieth  defence. 

463.  The  twenty-first  defence. 

464.  The  twenty-second  defence. 

465.  The        twenty-third        and 

twenty-fourth  defences. 
466:  The  twenty-fifth  defence. 

467.  The    twenty-sixth    defence: 

estoppel. 

468.  Estoppel  by  matter  of  record : 

res  judicata. 


169.  Estoppel  by  matter  of  deed. 

470.  The    twenty-sixth    defence; 

how  pleaded. 

471.  The  twenty-seventh  defence; 

statutes  of  limitations. 

472.  The  national  statute  of  limi- 

tation. 

476.  State  statutes  of  limitations 

do  not  apply  to  any  right 
of  action  which  is  attended 
to  by  a  national  statute  of 
limitation. 

477.  State  statutes  do  apply  to 

all  rights  of  action  which 
are  not  attended  to  by  a 
national  statute  of  limita- 
tion. 
477a.  The  twenty-eighth  defence. 

478.  Replications,  rejoinders,  and 

sur-rejoinders,  where  li- 
censes or  releases  are 
pleaded. 

481.  The  similiter. 

482.  Demurrers. 

483.  Demurrers       to       declara- 

tions. 

484.  Demurrers  to  pleas. 

486.  Joinders  in  demurrer. 

487.  Trial  of  actions  at  law  for 

infringement  of  patents. 

488.  Trial  by  jury. 

489.  Rules  of  practice. 

490.  Rules  of  evidence. 

491.  Letters  patent  as  evidence. 

492.  Reissue  letters  patent  as  evi- 

dence. 
494.  Letters  patent  presumed  to 
be  in  force  till  the  end  of 
the    term    expressed    on 
their  face. 


CONTENTS 


XXIX 


495.  Evidence  of  title. 

496.  Neither    licenses,     nor    re- 

leases, need  be  negatived 
in  a  plaintiff's  'prima  facie 
evidence. 

Evidence  of  the  defendant's 
doings. 

Expert  evidence  of  infringe- 
ment. 

Hypothetical  questions  for 
experts. 

Expert  testimony  relevant 
to  the  state  of  the  art. 

Cross-examination  of  ex- 
perts. 

Evidence  of  damages. 

Defendant's  evidence  in 
chief. 

Evidence  to  sustain  the  first 
defence. 
505.  To  sustain  the  second  de- 
fence. 

To  sustain  the  third  defence, 
when  based  on  prior  pat- 
ents. 

When  based  on  prior  printed 
publications. 

When  based  on  prior  knowl- 
edge or  use. 
509.  Rebutting  evidence  to  the 
third  defence,  when  based 
on  prior  knowledge  or  use. 

Rebutting  evidence  to  the 
third  defence,  however 
based. 

Evidence  to  sustain  the 
fourth  defence. 

To  sustain  the  fifth  defence. 

513.  The  sixth  defence. 

514.  The  seventh  defence. 


497. 

498. 

499. 

500. 

501. 

502. 
503. 

504. 


506. 


507. 


508. 


510. 


511. 


512. 


515. 
516. 
517. 
518. 
519. 
520. 
521. 
522. 
523. 
524. 
525. 
526. 
527. 
528. 
529. 
530. 
531. 
532. 
533. 
534. 
534a 
535. 

536. 


537. 
538. 
539. 
540. 

541. 
542. 
543. 
544. 

545. 
546. 
547. 

548. 


The  eighth  defence. 

The  ninth  defence. 

The  tenth  defence. 

The  eleventh  defence. 

The  twelfth  defence. 

The  thirteenth  defence. 

The  fourteenth  defence. 

The  fifteenth  defence. 

The  sixteenth  defence. 

The  seventeenth  defence. 

The  eighteenth  defence. 

The  nineteenth  defence. 

The  twentieth  defence. 

The  twenty-first  defence. 

The  twenty-second  defence. 

The  twenty-third  defence. 

The  twenty-fourth  defence. 

The  twenty-fifth  defence. 

The  twentj'-sixth  defence. 

The  twenty-seventh  defence. 
The  twenty-eighth  defence. 

How  testimony  is  taken  in 
actions  at  law. 

When  the  judge  may  direct 
the  jury  to  return  a  ver- 
dict for  the  defendant. 

Instructions  to  juries. 

Verdicts. 

New  trials. 

Trials  by  a  judge  without  a 
jury. 

Trial  by  referee. 

Judgments. 

Costs. 

Costs  under  the  statutes  and 
rules. 

Attorney's  docket  fees. 

Clerk's  fees. 

Magistrate's  fees. 

Witness  fees. 


\\\ 


CONTENTS 


549.  Taxation  of  costs. 
.").">().  \Vrit<  of  error. 

551.  Bills  of  exception. 

552.  Erroneous  instructions,  and 

refusals  to  instruct. 

553.  Exception    to    instructions, 


and     to    refusals     to     in- 
struct. 
554.  Time  when  exceptions  must 
be  noted,  and  time  when 
bills  of  exception  must    he 

drawn  up  and  signed. 


CHAPTER   XIX 

Damages Pages  613-633 


555.  The  generic  measure  of  dam- 

ages. 

556.  Established  royalties  as  spe- 

cific measures  of  damages. 

557.  Tests  applied  to  royalties  on 

behalf  of  defendants. 

558.  Tests  applied  to  royalties  on 

behalf  of  plaintiffs. 

559.  Money    paid    for    infringe- 

ment already  committed, 
is  no  measure  of  damages 
in  another  case. 

560.  Royalties  reserved  on  sales 

of  patents. 

561.  Royalties    for     licenses     to 

make  and  use,  and  royal- 
ties for  licenses  to  make 
and  sell. 

562.  Proportion  of  licensed  to  un- 

licensed practice  of  an 
invention. 


563.  Hurtful  competition  in  the 

absence  of  an  established 
royalty,  causes  recover- 
able damages. 

564.  Damages      for      unlicensed 

making,  without  unli- 
censed selling  or  using. 

565.  Evidence  of  damages. 

566.  Indirect  consequential  dam- 

ages. 
566a.  Reasonable  royalties. 

567.  Exemplary  damages. 

568.  Increased  damages. 

569.  Actual  damages  not  affected 

by  infringement  being  un- 
intended. 

570.  Counsel  fees  and  other  ex- 

penses. 

571.  Interest  on  damages. 
571a.  Damages  in  design  cases. 


CHAPTER  XX 

Actions  in  Equity Pages  634-741 


572.  Jurisdiction  of  equity  in  pat- 

ent causes. 

573.  Jurisdiction  of  equit3r  to  as- 

sess and  decree  damages. 


573a.  Jurisdiction  of  equity  of 
infringing  articles  before 
and  after  decree. 

574.  The  complainant. 


CONTENTS 

575. 

The  defendant. 

592. 

576. 

Original  bills. 

593. 

577. 

The  title  of  the  court. 

594. 

578. 

The  introductory  part. 

579. 

The  stating  part. 

595. 

580. 

The  prayer  for  relief. 

581. 

The  interrogating  part  under 

former  practice. 

596. 

582. 

The  prayer  for  process,  for- 

597. 

mer  practice. 

598. 

583. 

The  signature. 

584. 

Oaths  to  bills. 

599. 

585. 

Bills    to    perpetuate    testi- 

600. 

mony. 

601. 

585o 

i.  Bills  to  abridge  the  freedom 

602. 

of    speech    and    of    the 

603. 

press. 

604. 

586. 

Amendments  to  bills,  when 
allowed. 

605. 

587. 

Amendments  to  bills,  when 

606. 

necessary. 

607. 

588. 

Demurrers,    pleas    and    an- 

608. 

swers. 

609. 

589. 
590. 

590a 


5906. 
590c. 

590d 

591. 

59  b/ 


591/) 


Pleas  in  equity.  610. 

Arguments  upon  pleas,  and  611. 

replications  to  pleas.  612. 

,  Particulars  of  the  claim  or  613. 

defence — the  subject  gen-  614. 

erally  considered.  615. 

Application  of  the  practice.  616. 

Interrogatories, — the    sub-  617. 

ject  generally  considered.  618. 

.    What    interrogatories    are  619. 

proper.  620. 

Defences  in  equity  cases.  621. 

.  Conspiracy  by  plaintiff  in  622. 

restraint    of    trade    as    a  622a 

defence.  623. 

.  Counterclaims  and  set-offs  624. 

in  answer. 


XXXI 

Non-jurisdiction  of  equity. 

The  same  subject  continued. 

Non-jurisdiction  in  equity, 
how  set  up  as  a  defence. 

Prior  adjudication  at  law  is 
not  necessary  to  jurisdic- 
tion in  equity. 

Laches. 

Laches,  how  set  up. 

The  first  of  the  twenty-seven 
defences. 

The  second  defence. 

The  third  defence. 

The  fourth  defence. 

The  fifth  and  sixth  defences. 

The  seventh  defence. 

The  eighth  defence. 

The  ninth  and  tenth  de- 
fences. 

The  eleventh  defence. 

The  twelfth  defence. 

The  thirteenth  defence. 

The  fourteenth  defence. 

The  fifteenth  defence. 

The  sixteenth  defence. 

The  seventeenth  defence. 

The  eighteenth  defence. 

The  nineteenth  defence. 

The  twentieth  defence. 

The  twenty-first  defence. 

The  twenty-second  defence. 

The  twenty-third  defence. 

The  twenty-fourth  defence. 

The  twenty-fifth  defence. 

The  twenty-sixth  defence. 

The  twenty-seventh  defence. 

.  The  twenty-eighth  defence. 

Replications. 

Subordinate  bills  in  aid  of 
original  bills. 


XXXI I 


CON  n.\  PS 


625.  Supplemental  Nils. 

626.  Hills  in  the  nature  of  supple- 

mental bills. 
iL'7.  Bills  of  revivor. 

628.  Hills  in   the   nature  of   bills 

of  revivor. 

629.  Hills  of  revivor  and  supple- 

ment. 

630.  Leave  of  court  to  file  supple- 

mental bills,  and  bills  in 
the  nature  of  supplemental 
bills. 

631.  Demurrers,   pleas,  and    an- 

swers to  supplemental 
bills,  and  to  bills  in  the 
nature  of  supplemental 
bills. 

632.  Hearings. 

633.  Interlocutoiy  hearings. 

634.  Questions  of  law  arising  on 

hearings. 

635.  Questions  of  fact  arising  on 

hearings. 

636.  Evidence  in  support  of  the 

bill. 

637.  Evidence  in  support  of  de- 

fences. 

638.  Testimony. 

640.  Depositions  taken  in  other 

cases. 

641.  Documentary  evidence. 

642.  Trial  by  jury  in  equity  cases. 


643.  I  [earinge  by  masters  in  chan- 

cery. 

644.  Interlocutory  decrees. 
644a.  Appeal.-,  from  interlocutory 

decrees. 

01.").   Petitions  lor  reliearings. 

646.  Rehearings  lor  matter  appar- 
ent on  the  record. 

(147.  Behearin<rs  on  account  of 
newly  discovered  evi- 
dence. 

648.  Supplemental    bills    in    the 

nature  of  bills  of  review. 

649.  Final  decrees. 

650.  Bills  of  review. 

651.  Bills   of   review   to   correct 

errors  apparent  on  the 
pleadings  or  final  decree. 

652.  Bills  of  review  to  introduce 

evidence  discovered  after 
the  entry  of  the  final  de- 
cree. 

653.  Bills  in  the  nature  of  bills  of 

review. 

654.  Appeals. 

655.  Hearings  on  appeals. 

656.  Decisions  on  appeals. 

657.  Certificates    of    division    of 

opinion. 

657a.  Certificates  and  writs  of  cer- 
tiorari. 

6576.  Costs. 


CHAPTER  XXI 

Injunctions Pages  742-802 


658.  Jurisdiction  to  grant  injunc- 

tions. 
658a.  Form  of  injunctions. 

659.  Preliminary  injunctions. 


660.  Bills  for  preliminary  injunc- 

tions. 

661.  Notices  of  motions  for  pre- 

liminary injunctions. 


CONTENTS 


XXX111 


662.  Motions  for  preliminary  in- 

junctions. 

663.  Suspensions  of  motions  for 

preliminary  injunctions. 

664.  Temporary  restraining 

orders. 

665.  Elements    of    ■prima    facie 

rights  to  preliminary  in- 
junctions. 

666.  Prior  adjudication. 

667.  Public  acquiescence. 

668.  Duration  of  public  acquies- 

cence in  a  strict  monopoly. 

669.  Duration  of  public  acquies- 

cence in  a  licensed  monop- 
oly. 

670.  Public  acquiescence  need  not 

be  universal  to  be  effica- 
cious. 

671.  Decrees  pro  confesso. 

672.  Consent  decrees. 

673.  Defendant's     admission     of 

validity. 

674.  Interference  decision. 

675.  The  complainant's  title. 

676.  Infringements. 

677.  Defences     to    motions    for 

preliminary  inj  unctions ; 
and  first  by  way  of 
traverse. 

678.  Defences   by    way   of    con- 

fession and  avoidance. 

679.  Averting  effect  of  prior  ad- 

judication. 

680.  Averting  effect  of  public  ac- 

quiescence. 

681.  Averting  preliminary  injunc- 

tion by  proving  repeal  or 
expiration  of  patent,  or 
fault  in  title  thereto. 


682.  Averting  preliminary  injunc- 

tion by  proving  license. 

683.  By  proving  estoppel. 

684.  By  showing  laches. 

685.  Preliminary  injunction  must 

generally  follow  a  cause 
and  an  application  there- 
for. 

686.  Bonds  instead  of  injunctions, 

where  complainant  grants 
licenses. 

687.  Where  infringing  machinery 

embodies  non-infringing 
features,  also  in  some  other 
cases. 

688.  Bonds  required  from  com- 

plainants in  certain  cases. 

689.  Injunctions  not  averted  by 

the  existence  of  a  remedy 
at  law. 

690.  Injunctions  pro  confesso  on 

withdrawal  of  opposition 
to  a  motion  for  an  injunc- 
tion. 

691.  Discretion  of  the   court  in 

granting  or  refusing  in- 
junctions. 

692.  Motions  to  dissolve  prelim- 

inary injunctions. 

693.  Motions  to  dissolve  for  errors 

in  point  of  law. 

694.  Motions  to  dissolve  on  ac- 

count of  newly  discovered 
evidence. 

695.  Reinstatement  of  dissolved 

injunctions. 

696.  Consequences   of   obedience 

or  disobedience  to  injunc- 
tions which  are  subse- 
quently dissolved. 


XXXIV 


CONTENTS 


696a.   Appeals  from   preliminary 

injunctions. 
(107.  Permanent  injunctions. 

698.  Refusal    of    permanent    in- 

junction, because  the  pat- 
ent  has  expired. 

699.  Because  the  complainant  lias 

assigned  the  patent. 

700.  Because    the    defendant    is 

dead,  or,  if  a  corporation, 
is  dissolved. 

701.  Cessation  of  infringement  no 

ground  for  refusal  to  en- 
join. 
701(7.  Not  refused  because  of  non- 
use  of  the  patent. 

702.  Postponement  of  permanent 

injunctions. 


7(>.'{.  Suspension  of  permanent 
injunctions  pending  ap- 
peals therefrom. 

70  1.  Dissolution  of  permanent 
injunctions. 

705.  Injunctions  granted  inde- 
pendent of  other  relief, 
and  against  complainants 
in  certain  cases. 

7(H).  The  duration  of  injunctions 
generally  limited  by  the 
term  of  the  patent. 

707.  Territorial  scope  of  injunc- 

tions. 

708.  Attachments  for  contempt. 

709.  Improper   defences    to    mo- 

tions for  attachments. 

710.  Penalties    for    violations    of 

injunctions. 


CHAPTER  XXII 

Profits Pages  803-840 


711.  The  infringer's  profits  recov- 

erable in  equity. 

712.  In   cases   of   joint   infringe- 

ment. 

713.  In    cases    of    infringement 

partly  unprofitable. 

714.  What  spaces  of  time  an  ac- 

count of  profits  may  cover. 

715.  The  generic  rule  for  ascer- 

taining infringer's  profits. 

710.  Complainant's  damages  no 
criterion  of  defendant's 
profits. 

717.  Defendant's  profits  in  cases 
of  unlawfully  making  and 
selling  articles  covered  by 
the  complainant's  patent. 


718.  Method  of  ascertaining  cost 

of  making  and  selling  in- 
fringing articles. 

719.  Burden  of  proof  when  it  is 

necessary  to  separate 
profits  due  to  patented 
features,  from  profits  due 
to  other  features  of  an 
infringing  article. 
719a.  The  same  subject  con- 
tinued. 

720.  Method  of  making  the  sep- 

aration where  defendant 
made  and  sold  the  pat- 
ented invention  sep- 
arately, as  well  as  in  con- 
nection with  other  things. 


CONTENTS 


XXXV 


721.  Method     where     defendant 

pays  royalty  for  right  to 
make  and  sell  the  features 
not  covered  by  the  patent 
in  suit. 

722.  Cases  where  no  separation  is 

required  or  allowed. 

723.  Method  of  making  the  sep- 

aration by  the  criterion  of 
comparative  cost. 
723a.  Defendant's  profits  in  de- 
sign cases. 

724.  Defendant's  profits  in  cases 

of  unlawfully  selling  ar- 
ticles partly  or  wholly 
covered  by  complainant's 
patent. 

725.  Defendant's  profits  in  cases 

of  unlawful  using  of  pat- 
ented processes  or  things. 

729.  Affirmative  gain. 

730.  Saving  from  loss. 

731.  Affirmative  gain  and  saving 

from  loss. 

732.  Standard  of  comparison  need 

not  have  been  used  by  the 
infringer. 

734.  Method  of  selecting  the 
proper  standard  of  com- 
parison. 

734a.  Credits  due  to  defendant's 
improvements. 


735.  The  rule  as  to  using  has  only 

a  limited  application  to 
cases  of  infringement  by 
making  or  by  selling. 

736.  Interest        on        infringer's 

profits. 

739.  Proceedings  before  masters. 

740.  Evidence  before  masters. 

741.  Objections  to  evidence  be- 

fore masters. 

742.  Questions  of  the  extent  of 

the  defendant's  infringe- 
ment. 

743.  Questions  relevant  to  differ- 

ent sorts  of  defendant's 
alleged  infringement. 

744.  Master's  reports. 

745.  Exceptions   to   master's   re- 

port. 

746.  Defendants'    exceptions    to 

master's  reports. 

747.  Defendants'  affirmative  ex- 

ceptions   to    master's    re- 
ports. 
74S.  Defendants'     negative     ex- 
ceptions   to    master's    re- 
ports. 

749.  Complainants'  exceptions  to 

master's  reports. 

750.  Outline  of  practice  relevant 

to  master's  findings. 


CONTENTS 


xxxvu 


APPENDIX 


THE  PATENT  STATUTES 

The  Repealed  Statutes Pages  841-930 


PAGE 

Patent  Act  of  1790 841 


1793 

845 

1794 

852 

1800 

853 

1819 

855 

July  3,  1832. 

856 

July  13,  1832. 

858 

1836 

859 

1837 

876 

1839 

885 

1842 

889 

1848 

892 

PAGE 

Patent  Act  of  1849 894 

1852 895 

Feb.  18,  1861 .  896 

March  2,  1861  897 

1862 905 

1863 905 

1864 907 

1865 90S 

1866 909 

1870 909 

March  3,  1871  938 
March  24, 1871939 


The  Revised  Statutes Pages  940-971 


SECTION. 

440.  Clerks  and  employes. 

441.  Secretary  of  the  Interior. 

475.  Establishment  of  the  Patent 

Office. 

476.  Officers  and  employes. 

477.  Salaries. 

478.  Seal. 

479.  Bonds  of  Commissioner  and 

chief  clerk. 

480.  Restrictions    upon    officers 

and  employes. 

481.  Duties  of  Commissioner. 

482.  Duties      of      examiners-in- 

chief. 

483.  Establishment     of     regula- 

tions. 


SECTION. 

484.  Arrangement  and  exhibition 

of  models,  &c. 

485.  Disposals  of  models  on  re- 

jected applications. 

486.  Library. 

487.  Patent-agents    may    be   re- 

fused recognition. 

488.  Printing  of  papers  filed. 

489.  Printing    copies    of    claims, 

laws,  decisions,  &c. 

490.  Printing   specifications    and 

drawings. 

491.  Additional  specifications  and 

drawings. 

492.  Lithographing       and       en- 

graving. 


XXXV111 


CONTENTS 


SECTION. 

193.  Price  of  copies  of  specifica- 
tions and  drawings. 

•194.  Annual  report  <>t'  the  Com- 
missioner. 

496.  Disbursements  for  Patent- 
Office. 

629.  Jurisdiction       of 
Courts. 

699.  Writs  of  error  and  appeals, 
without  reference  to 
amount. 

892.  Copies   of   records,   &c,   of 

Patent-Office. 

893.  Copies    of    foreign    letters- 

patent. 

894.  Printed  copies  of  specifica- 

tions   and     drawings     of 
patents. 
973.  Costs  where  disclaimers  are 
necessary. 

4883.  Patents,    how    issued,    at- 

tested, and  recorded. 

4884.  Their  contents  and  dura- 

tion. 

4885.  Date  of  patent. 

4886.  What  inventions  are  pat- 

entable. 

4887.  Patents  for  inventions  pre- 

viously patented  abroad. 

4888.  Requisites  of  specification 

and  claim. 

4889.  Drawings,  when   requisite. 

4890.  Specimens    of    ingredients, 

&c. 

4891.  Model,  when  requisite. 

4892.  Oath  required  from  appli- 

cant. 

4893.  Examination    and    issuing 

patent. 


SECTION. 

4894.  Limitation    upon   time   of 

completing  application. 

4895.  Patents  granted  to  assignee. 
1896.  When,  and  on  what  oath, 

executor  or  administrator 

may  obtain  patent. 
Circuit      4897.  Renewal  of  application  in 

cases  of  failure  to  pay  fees 
in  season. 

4898.  Assignment  of  patents. 

4899.  Persons  purchasing  of  in- 
ventor before  application 
may  use  or  sell  the  thing 
purchased. 

4900.  Patented  articles  must  be 
marked  as  such. 

4901 .  Penalty  for  falsely  marking 
or  labelling  articles  as 
patented. 

4902.  Filing  and  effect  of  caveats. 

4903.  Notice  of  rejection  of  claim 
for  patent  to  be  given  to 
applicant. 

4904.  Interferences. 

4905.  Affidavits  and  depositions. 

4906.  Subpoenas  to  witnesses. 

4907.  Witness  fees. 

4908.  Penalty  for  failing  to  attend 
or  refusing  to  testify. 

4909.  Appeals  from  primary  ex- 
aminers to  examiners-in- 
chief. 

4910.  From  examiners-in-chief  to 
Commissioner. 

4911.  From  the  Commissioner  to 
the  supreme  court,  D.  C. 

4912.  Notice  of  such  appeal. 

4913.  Proceedings  on  appeal  to 
supreme  court. 


CONTENTS 


XXX IX 


SECTION. 

4914.  Determination  of  such  ap- 

peal and  its  effect. 

4915.  Patents  obtainable  by  bill 

in  equity. 

4916.  Re-issue  of  defective  pat- 

ents. 

4917.  Disclaimer. 

4918.  Suits   touching   interfering 

patents. 

4919.  Suits      for      infringement; 

damages. 

4920.  Pleading  and  proof  in  ac- 

tions for  infringement. 

4921.  Power  of  courts  to  grant  in- 

junctions    and     estimate 
damages. 

4922.  Suit  for  infringement  where 

specification  is  too  broad. 

4923.  Patent  not  void  on  account 

of  previous  use  in  foreign 
country. 

4924.  Extension        of        patents 

granted  prior  to  March  2, 
1861. 


SECTION. 

4925.  What  notice  of  application 

for    extension     must    be 
given. 

4926.  Applications      for      exten- 

sion  to  whom  to   be  re- 
ferred. 

4927.  Commissioner  to  hear  and 

decide  the  question  of  ex- 
tension. 

4928.  Operation  of  extension. 

4929.  Patent  for  designs  author- 

ized. 

4930.  Models  of  designs. 

4931.  Duration    of    patents    for 

designs. 

4932.  Extension  of   patents  for 

designs. 

4933.  Patents   for   designs   sub- 

ject to  general  rules*  of 
patent  law. 

4934.  Fees  in  obtaining  patents, 

&c. 

4935.  Mode  of  payment. 

4936.  Refunding. 


PAGE 

PATENT  ACT  OF  1875 971 

PATENT  ACT  OF  1887 972 

PATENT  ACT  OF  1888 973 

JUDICIARY  ACT  OF  1891 974 

JUDICIARY  ACT  OF  1893 977 

JURISDICTION  ACT  OF  1897 979 

PATENT  ACT  OF  1897 980 

PATENT  ACT  OF  1899 986 

PATENT  ACT  OF  APRIL,  1902 987 

PATENT  ACT  OF  MAY,  1902 988 

PATENT  ACT  OF  1903 989 

PATENT  ACT  OF  May  23,  1908 993 

PATENT  ACT  OF  May  23,  1908 995 


Xl  CONTENTS 

I'AGK 

PATENT  A(  IT  ( >F  March  1,  1909 995 

( '( UHT  OF  CLAIMS  ACT,  June  25,  1910 996 

PATENT  ACT  OF  July   lti,  1914 997 

PATENT  ACT  OF  March  3,  1915 997 

FEDERAL  ANT]  TRUST  ACT  OF  October  15,  1914 998 

PATENT  ACT  OF  1916 L012 

PATENT,    TRADE-MARK  AND  COPYRIGHT    ACT    OF 

August  17,  1916 loll 

INDEX 1015-1098 


TABLE  OF  FEDERAL  REPORTS 


Abbott's  U.  S.  Reports:  Two  volumes  of  selected  cases,  from  all 
the  United  States  District  Courts,  and  United  States  Circuit 
Courts,  from  1865  to  1871. 

App.  D.  C. :  The  first  forty-four  volumes  of  the  reports  of  the  Court  of 
Appeals  of  the  District  of  Columbia,  from  the  beginning  of  that 
Court  in  1893,  until  1916. 

Baldwin:  One  volume  of  reports  of  decisions  in  Circuit  Courts  of 
the  United  States,  in  the  third  circuit,  from  1827  to  1833. 

Bann.  &  Ard.:  Five  volumes  of  patent  cases,  decided  by  the  Circuit 
Courts  of  the  United  States,  from  1874  to  1880,  and  collected  by 
Hubert  A.  Banning  and  Henry  Arden. 

Bissell:  Nine  volumes  of  reports  of  decisions  in  District  Courts  and 
Circuit  Courts  of  the  United  States,  in  the  seventh  circuit,  from 
1851  to  1880. 

Black:  The  reports  of  the  Supreme  Court  of  the  United  States,  in 
two  volumes,  from  1861  to  1862. 

Blatch.:  The  reports  in  eighteen  volumes,  by  Samuel  Blatchford, 
of  the  Circuit  Courts  of  the  United  States,  in  the  second  circuit, 
from  1845  to  1881. 

Bond:  Two  volumes  of  reports  of  decisions  in  District  Courts  and 
Circuit  Courts  of  the  United  States,  in  the  sixth  circuit,  from  1856 
to  1871. 

Brock.:  Two  volumes  of  reports  of  decisions  of  Chief  Justice  Mar- 
shall, in  Circuit  Courts  of  the  United  States,  in  the  fourth  circuit, 
from  1802  to  1836. 

C.  C.  A. :  The  first  one  hundred  and  forty-six  volumes  of  Circuit  Courts 
of  Appeals  reports,  from  1891  to  1916,  published  by  the  Lawyers' 
Co-operative  Publishing  Association.  All  the  cases  contained 
in  these  volumes  are  also  contained  in  the  "Federal  Reporter," 
and  are  cited  from  the  "Federal  Reporter"  in  this  book,  and  not 
from  the  "C.  C.  A.";  because  the  "Federal  Reporter"  is  more 
numerously  and  widely  distributed,  and  is  always  cited  by  the 
courts,  even  in  the  exceptional  cases  wherein  C.  C.  A.  is  also  cited. 

xli 


xlil  TABLE   <JE   FEDERAL   REPORTS 

('mask;  One  volume  of  reports  of  derisions  of  Chief  .Justice  Chase, 
in  Circuit  Courts  of  the  United  States,  in  the  fourth  circuit,  from 
1865  to  1869. 

Cuff.:  Four  volumes  of  reports  of  decisions  of  Justice  Clifford,  in 
the  Circuil  Courts  of  the  United  States,  in  the  first  circuit,  from 
185S  to  1878. 

CoUET  of  Claims:  The  first  fifty  volumes  of  the  decisions  of  the 
Court  of  Claims  of  the  United  States,  from  1863  to  1915. 

Cranch:  The  reports  of  the  Supreme  Court  of  the  United  States,  in 
nine  volumes,  from  1801  to  1815. 

Cranch's  C.  C.  Reports:  Five  volumes  of  reports  by  Judge  Cranch, 
of  decisions  in  the  United  States  Circuit  Court  of  the  District  of 
Columbia,  from  1801  to  1840.  These  volumes  are  sometimes 
cited  as  1,  2,  3,  4,  5  D.  C.  R. 

Curtis:  Two  volumes  of  reports,  by  Justice  Curtis,  of  decisions  in 
the  Circuit  Courts  of  the  United  States,  in  the  first  circuit,  from 
1851  to  1856. 

1).  C.  R.:  Volumes  6  and  7  of  reports  of  decisions  in  the  Supreme 
Court  of  the  District  of  Columbia,  from  1863  to  1873;  and  vol- 
ume 21  of  reports  of  decisions  in  the  same  court,  from  1892  to 
1893. 

Deady:  One  volume  of  reports  by  Judge  Deady,  of  decisions  in  Cir- 
cuit Courts  of  the  United  States,  in  the  ninth  circuit,  from  1861 
to  1869. 

Dillon:  Five  volumes  of  reports  by  Judge  Dillon,  of  decisions  in 
sundry  Circuit  Courts  of  the  United  States,  in  the  eighth  circuit, 
from  1870  to  1879. 

F.  C:  Thirty  volumes  of  "Federal  Cases,"  being  a  series  of  secondary 
reports  of  decisions  in  the  United  States  District  Courts  and  the 
United  States  Circuit  Courts,  rendered  prior  to  the  time  of  the 
"Federal  Reporter."  All  the  important  patent  cases  in  the  "Fed- 
eral Cases"  were  previously  reported  in  other  reports  specified 
in  this  table;  and  they  are  cited  in  this  book  from  those  other  re- 
ports, and  not  from  the  "Federal  Cases." 

Fisher:  Six  volumes  of  patent  cases,  decided  by  the  Circuit  Courts 
of  the  United  States,  from  1848  to  the  end  of  1873,  and  collected 
by  S.  S.  Fisher,  from  periodicals  and  manuscripts  and  other  au- 
thentic sources. 

Fisher's  Reports:  One  volume  of  patent  cases,  from  1821  to  1851, 
collected  b}^  W.  H.  Fisher,  from  official  reports  specified  in  this 


TABLE   OF   FEDERAL  REPORTS  xliii 

table.  Those  cases  are  cited  in  this  book  from  the  official  reports, 
and  not  from  this  collection  of  W.  H.  Fisher. 

Flippin:  One  volume  of  reports  of  decisions  in  Circuit  Courts  of  the 
United  States,  in  the  sixth  circuit,  from  1859  to  1877. 

F.  R.:  The  first  two  hundred  and  thirty-five  volumes  of  the  Federal 
Reporter,  containing  all  the  decisions  of  the  District  Courts  of 
the  United  States,  and  of  the  Circuit  Courts  of  the  United  States, 
and  of  the  Circuit  Courts  of  Appeals  of  the  United  States,  from 
1879  to  1916. 

G allison:  Two  volumes  of  reports  of  decisions  in  the  Circuit  Courts 
of  the  United  States,  in  the  first  circuit,  from  1812  to  1815. 

Gilpin:  One  volume  of  reports  of  decisions  in  the  United  States  Dis- 
trict Court  for  the  Eastern  District  of  Pennsylvania,  from  1828  to 
1836. 

Hempstead:  One  volume  of  reports  of  decisions  in  the  United  States 
District  Court,  and  the  United  States  Circuit  Court,  for  the  Dis- 
trict of  Arkansas,  from  1836  to  1855. 

Heywood  &  Hazleton:  Two  volumes  of  reports  of  decisions  in  the 
Circuit  Court  of  the  District  of  Columbia,  from  1840  to  1863. 

Holmes:  One  volume  of  reports,  by  Oliver  Wendell  Holmes,  Jr.,  of 
decisions  in  the  Circuit  Courts  of  the  United  States,  in  the  first 
circuit,  from  1870  to  1S75. 

Howard  :  The  reports  of  the  Supreme  Court  of  the  United  States,  in 
twenty-four  volumes,  from  1843  to  1860. 

Hughes:  Three  volumes  of  reports  by  Judge  Hughes,  of  decisions  in 
District  Courts  and  Circuit  Courts  of  the  United  States,  in  the 
fourth  circuit,  from  1870  to  1879.- 

Lowell:  Two  volumes  of  reports  by  Judge  John  Lowell,  of  decisions 
in  the  United  States  District  Court,  for  the  District  of  Massachu- 
setts, from  1865  to  1877. 

Mackey:  The  reports  of  the  Supreme  Court  of  the  District  of  Colum- 
bia, in  nine  volumes,  from  1880  to  1892.  These  volumes  are 
sometimes  cited  as  12,  13,  14,  15,  16,  17,  IS,  19,  20  D.  C.  R. 

Mason:  The  reports  in  five  volumes,  of  the  United  States  Circuit 
Courts,  in  the  first  circuit,  from  1816  to  1830. 

McAllister:  One  volume  of  reports  of  decisions  in  Circuit  Courts  of 
the  United  States,  in  the  ninth  circuit,  from  1855  to  1859. 

McArthur:  The  reports  of  the  Supreme  Court  of  the  District  of 
Columbia,  in  three  volumes,  from  1873  to  1879.  These  volumes 
are  sometimes  cited  as  8,  9,  10  D.  C.  R. 


Xliv  TABLE    OF  FEDERAL   REPORTS 

McAbthub  &  Mackky:  The  reports  of  the  Supreme  Court  of  the 
District  of  Columbia,  in  one  volume,  from  1879  to  1880.  This 
volume  is  sometimes  cited  as  11  D.  C.  R. 

McAuthi  it's  Patent  Casks:  One  volume  of  reports  of  patent  cases, 
decided  in  the  Circuit  Court  of  the  District  of  Columbia,  from 
1840  to  1859,  on  appeal  from  the  Commissioner  of  Patents;  re- 
ported by  Frank  MacArthur,  Examiner  of  Interferences. 

McCrary:  Two  volumes  of  reports  by  Judge  McCrary,  of  decisions 
in  Circuit  Courts  of  the  United  States,  in  the  eighth  circuit,  from 
1877  to  1881. 

McLean:  Six  volumes  of  reports,  by  Justice  McLean,  of  decisions  in 
sundry  United  States  Circuit  Courts,  from  1829  to  1855. 

O.  G.:  The  first  two  hundred  and  thirty-four  volumes  of  the  Official 
Gazette  of  the  Patent  Office,  from  1872  to  1916. 

Olcott:  One  volume  of  reports  of  admiralty  cases,  decided  in  the 
United  States  District  Courts  in  New  York,  from  1843  to  1847. 

Paine:  Two  volumes  of  reports  of  decisions  in  Circuit  Courts  of  the 
United  States,  in  the  second  circuit,  from  1810  to  1840. 

Peters:  The  reports  of  the  Supreme  Court  of  the  United  States,  in 
sixteen  volumes,  from  1828  to  1842. 

Peters'  C.  C.  Reports:  One  volume  of  reports  of  decisions  in  Cir- 
cuit Courts  of  the  United  States,  in  the  third  circuit,  from  1803 
to  1818. 

Robb:  Two  volumes  of  patent  cases,  decided  prior  to  1850,  and  col- 
lected from  official  reports  specified  in  this  table.  Those  cases 
are  cited  in  this  book  from  the  official  reports,  and  not  from  Robb's 
collection. 

Sawyer:  The  reports  in  seven  volumes,  by  Judge  Sawyer,  of  deci- 
sions in  Circuit  Courts  of  the  United  States,  in  the  ninth  circuit, 
from  1870  to  1882. 

Story:  Three  volumes  of  reports,  by  Justice  Story,  of  decisions  in 
the  Circuit  Courts  of  the  United  States,  in  the  first  circuit,  from 
1839  to  1845. 

Sumner:  Three  volumes  of  reports,  by  Charles  Sumner,  of  decisions 
in  Circuit  Courts  of  the  United  States,  in  the  first  circuit,  from 
1829  to  1839. 

Taney:  One  volume  of  reports  of  decisions  of  Chief  Justice  Taney, 
in  Circuit  Courts  of  the  United  States,  in  the  fourth  circuit,  from 
1836  to  1861. 

U.  S. :  The  reports  of  the  Supreme  Court  of  the  United  States,  in  one 


TABLE  OF  FEDERAL  REPORTS  xlv 

hundred  and  fifty  volumes,  from  1875  to  1916,  beginning  with 
91  U.  S.  and  ending  with  240  U.  S. 

U.  S.  App.:  Sixty-three  volumes  of  United  States  Circuit  Courts  of 
Appeals  reports,  from  1891  to  1899.  All  the  cases  contained  in 
this  series  are  also  contained  in  the  "Federal  Reporter,''  and  are 
cited  from  the  "Federal  Reporter"  in  this  book,  rather  than  from 
"U.  S.  App.,"  because  the  "Federal  Reporter"  is  more  widely 
and  numerously  distributed,  and  is  always  cited  by  the  courts; 
and  because  U.  S.  App.  covers  only  a  few  years  of  the  work  of  the 
Circuit  Courts  of  Appeals. 

Wallace:  The  reports  of  the  Supreme  Court  of  the  United  States, 
in  twenty-three  volumes,  from  1863  to  1874. 

Wallace,  Jr.  :  Three  volumes  of  reports  of  decisions  in  Circuit  Courts 
of  the  United  States,  in  the  third  circuit,  from  1842  to  1862. 

Washington:  Four  volumes  of  reports  of  decisions  of  Justice  Wash- 
ington, in  Circuit  Courts  of  the  United  States,  in  the  third  cir- 
cuit, from  1803  to  1827. 

Wheaton:  The  reports  of  the  Supreme  Court  of  the  United  States, 
in  twelve  volumes,  from  1816  to  1827. 

Whitman:  Two  volumes  of  patent  cases  collected  by  C.  S.  Whitman 
from  the  official  reports  of  the  Supreme  Court  of  the  United  States, 
from  1810  to  1874.  This  collection  contains  all  of  the  patent  cases 
decided  by  the  Supreme  Court,  prior  to  21  Wallace;  but  they  are 
cited  in  this  book  from  the  Supreme  Court  reports,  and  not  from 
Whitman's  collection. 

Woodbury  &  Minot:  Three  volumes  of  reports  in  the  Circuit  Courts 
of  the  United  States,  in  the  first  circuit,  from  1845  to  1847. 

Woods:  Three  volumes  of  reports  by  Justice  William  B.  Woods,  of 
decisions  in  Circuit  Courts  of  the  United  States,  in  the  fifth  cir- 
cuit, from  1870  to  1879. 

Woolworth:  One  volume  of  reports  of  decisions  of  Justice  Miller, 
in  Circuit  Courts  of  the  United  States,  in  the  eighth  circuit,  from 
1863  to  1869. 


TABLE  OF  CITED  CASES 

A 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Abbett  v.  Eusi 5  Bann.  &  Ard 346 

Abbott  Machine  Co.  v.  Bonn 51  F.  R 49 

A.  B.  Dick  Co.  v.  Belke  &  Wagner 

Co 86  F.  R 82 

A.  B.  Dick  Co.  v.  Fuller 198  F.  R 331,  332,  333 

A.  B.  Dick  Co.  v.  Henry 75  F.  R 561 

A.  B.  Dick  Co.  v.  Underwood  Type- 
writer Co 235  F.  R 660,  663 

A.  B.  Dick  Co.  v.  Wichelman 74  F.  R 54 

Accumulator   Co.    v.   Edison    Illumi- 
nating Co 63  F.  R 771 

Accumulator   Co.    v.   Julien   Electric 

Co 57  F.  K. 208,  225 

Accumulator  Co.  v.  Storage  Co 53  F.  R 766,  776,  797 

Acme    Acetylene    Appliance    Co.    v. 

Commercial  Acetylene  Co 192  F.  R 208 

Acme  Hay  Harvesting  Co.  v.  Martin .  33  F.  R 53 

Acme  Steel  Goods  Co.  v.  Am.  Metal 

Fastener  Co 206  F.  R 37,  652 

Acme  Truck  &  Tool  Co.  v.  Meredith.  183  F.  R 231 

Adam  v.  Folger 120  F.  R 373,  447,  648,  751 

Adams  v.  Brown 7  Cushing  (Mass.) 840 

Adams  v.  Burke 17  Wallace 212,  348,  357,  361 

Adams  v.  Howard 19  F.  R 601,  676 

Adams  v.  Howard 22  F.  R 373,  375 

Adams  v.  Iron  Co 26  F.  R 676,  679 

Adams  v.  Jones 1  Fisher 135 

Adams  v.  Keystone  Mfg.  Co 41  F.  R 817,  834 

Adams  v.  Loft 4  Bann.  &  Ard 53 

Adams  v.  Mfg.  Co 3  Bann.  &  Ard 432 

Adams  v.  Stamping  Co 28  F.  R 616 

Adams  v.  Stamping  Co 141  U.  S 40,  55,  82 

Adams  Co.  v.  Schreiber  &  Conchar 

Mfg.  Co Ill  F.  R 447 

Adams  Electric  Ry.   Co.   v.   Lindell 

Ry.  Co 63  F.  R 53 

xlvii 


xlviii  TABLE   OF   CITED   CASES 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Adamson  v.  Staler 208  P.  II <>74 

Adee  v.  Peck 42  F.  It 29 

Adec  v.  Thomas 41  F.  R 547 

A.  D.  Howe  Machine  Co.  v.  Coffield 

Motor  Washer  Co 196  F.  R 288 

Adrian   Wire   Fence  Co.   v.  Jackson 

Wire  Fence  Co 190  F.  R 511 

Adriance  v.  McCormick  Mach.  Co. .  .55  F.  R 486 

Adriance  v.  McCormick  Mach.  Co.  .  .56  F.  R 486 

Adriance,   Piatt   &   Co.   v.   National 

Harrow  Co 121  F.  R 649 

Adt  v.  Bay  State  Optical  Co 226  F.  R 57 

Aeolian  Co.  v.  Hallet  &  Davis  Piano 

Co 134  F.  R 328 

Agawam  Co.  v.  Jordan 7  Wallace.  .62,  109,  308,   310,  311, 

317,  324,  536,  578,  686 

Ager  v.  Murray 105  U.'S 194,  349,  351 

Aiken  v.  Bemis 3  Woodbury  &  Minot,  436,  596,  597 

Aiken  v.  Dolan 3  Fisher 58 

Aiken  v.  Print  Works 2  Cliff 321 

Aiken  v.  Ritter  &  Conley  Mfg.  Co.  .  .205  F.  R 16 

Ajax  Forge  Co.  v.  Morden  Frog,  etc., 

Works 156  F.  R 255 

Ajax     Metal    Co.    v.    Brady    Brass 

Co 155  F.  R 46,  83 

Alabastine  Co.  v.  Payne 27  F.  R 494 

Alaska  Packers'   Association  v\   Let- 
son  119  F.  R 440 

Alaska   Packers'    Association    v.    Pa- 
cific Steam  Whaling  Co 93  F.  R 364 

Alaska  Packers'  Association  v.  Pacific 

Steam  Whaling  Co 100  F.  R 364 

Albany    Steam    Trap    Co.    v.    Felt- 

housen 20  F.  R 601 

Albright  v.  Langfeld 131  F.  R 57 

Albright  v.  Teas 106  U.  S 469 

Alden  v.  Dewey 1  Story 596 

Allen  v.  Blunt 2  Woodbury  &  Minot 596 

Allen  v.  Gulp 166  U.  S 297 

Allen  v.  Deacon 21  F.  R 529 

Allen  v.  Riley. 203  U.  S 191 

Allen  v.  Steele 64  F.  R 59 

AUington  &  Curtis  Mfg.  Co.  ,v.  Booth. 78  F.  R 636,  772,  776 


TABLE    OF   CITED    CASES  xlix 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Allington  &  Curtis  Mfg.  Co.  v.  Globe 

Co 89  F.  R 234 

Allington  &  Curtis  Mfg.  Co.  v.  Glor.  .83  F.  R 234 

Allington    &     Curtis     Mfg.     Co.     v. 

Lynch 71  F.  R 766,  767 

Allis  v.  Buckstaff 13  F.  R 686 

Allis  v.  Stowell 5  Bann.  &  Ard 722 

Allis  v.  Stowell 16  F.  R 791 

Allis  v.  Stowell 19  O.  G 796 

Allison  v.  Brooklyn  Bridge 29  F.  R 232,  235 

Allred  v.  Bray 41  Mo 490 

Alphons  Custodis,  etc.,  Co.  v.  Hein- 

icke 135  F.  R 754 

Alvin  Mfg.  Co.  v.  Scharling 100  F.  R 548 

Alvord    v.    Smith    &    Watson     Iron 

Works 216  F.  R 70 

Am  Ende  v.  Seabury 43  F.  R 622,  808 

American  Bell  Telephone  Co.  v.  Al- 
bright  32  F.  R 381 

American     Bell     Telephone     Co.     v. 

Brown  Tel.  Co 58  F.  R 768 

American     Bell    Telephone    Co.     v. 

Cushman 57  F.  R 205,  489 

American     Bell    Telephone    Co.     v. 

Cushman  Telephone  Co 35  F.  R 105 

American     Bell     Telephone     Co.     v. 

Cushman  Telephone  Co 36  F.  R 786 

American     Bell     Telephone    Co.     v. 

Dolbear 15  F.  R 447 

American     Bell     Telephone     Co.     v. 

Globe  Telephone  Co 31  F.  R 94 

American    Bell    Telephone    Co.     v. 

Kitsell 35  F.  R 718 

American     Bell     Telephone     Co.     v. 

McKeesport  Tel.  Co 57  F.  R 753 

American     Bell    Telephone    Co.     v. 

National  Telephone  Co 27  F.  R 408,  545 

American     Bell    Telephone    Co.     v. 

National  Telephone  Mfg.  Co. .  .  .109  F.  R 13 

American     Bell     Telephone     Co.     v. 

People's  Telephone  Co 22  F.  R 94 

American     Bell     Telephone     Co.     v. 

Southern  Telephone  Co 34  F.  R 641,  681,  710 


1  TABLE    01    CITED    tasks 

Names  of  Cases.  Where  Reported.  Pages  in  tins  book. 

American     Boll    Telephone    Co.    v. 

Spencer 8  F.  R 274,   1 17 

American     Bell    Telephone    Co.    v. 

United  States (58  F.  R Ill 

American  Box  Machine  Co.  v.  Day   .32  F.  R 435 

American  Cable  Ely.  <  '<>.  v.  Chicago 

City  Ky.  Co 41  F.  R 077 

American  Cable  By.  ( !o.  v.  New  York. 56  F.  R 29 

American  Can  Co.  v.  Hickmott  As- 
paragus Co 142  F.  R 138,  237 

American    Caramel    Co.    v.    Mills    & 

Bro 149  F.  R 55,  57,  718 

American    Caramel    Co.    v.    Mills   & 

Bro 162  F.  R 719 

American  Caramel  Co.  v.  White 234  F.  R 718,  741 

American  Cotton  Tie  Co.  v.  Sim- 
mons  106  U.  S 364 

American  Cotton  Tie  Supply  Co.  v. 

McCready 17  Blatch 790 

American  Delinter  Co.  v.  Am.  Ma- 
chine &  Const.  Co 128  F.  R 463 

American  Diamond  Drill  Co.  v.  Ma- 
chine Co 32  F.  R . 829 

American  Diamond  Bock  Boring  Co. 

v.  Marble  Co 2  F.  R 786 

American  Diamond  Rock  Boring  Co. 

v.  Sheldon 18  Blatch 721 

American  Diamond  Rock  Boring  Co. 

v.  Sheldon 1  F.  R 786 

American  Diamond  Rock  Boring  Co. 

v.  Sullivan  Machine  Co 14  Blatch 455 

American   Disappearing   Bed   Co.    v. 

Amaelsteen 182  F.  R 16 

American   Dunlop  Tire  Co.    v.   Erie 

Rubber  Co 66  F.  R 236 

American  Electrical   Novelty  Co.   v. 

Newgold 99  F.  R 758 

American  Electric  Co.  v.  Consumers' 

Gas  Co 47  F.  R 368 

American    Feather    Duster    Co.    v. 

Levy 43  F.  R 30 

American  Fibre-Chamois  Co.  v.  Buck- 
skin-Fibre Co 72  F.  R 684 


TABLE    OF   CITED   CASES  li 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

American  Fur  Refining  Co.  v.  Cimi- 

otti  Unhairing  Co 118  F.  R 783 

American  Fur  Refining  Co.  v.  Cimi- 

otti  Unhairing  Mach.  Co 123  F.  R 424 

American    Grain    Separator    Co.    v. 

Twin  City  Separator  Co 202  F.  R 719,  783,  784 

American  Graphophone  Co.  v.  Amet. 74  F.  R 193 

American  Graphophone  Co.  v.  Boston 

Store 225  F.  R 397 

American  Graphophone  Co.   v.  Edi- 
son Phonograph  Works 72  O.  G 657 

American  Graphophone  Co.  v.  Gimbel 

Bros 234  F.  R 422 

American  Graphophone  Co.  v.  Haw- 
thorne  92  F.  R 493 

American  Graphophone  Co.  v.  Leeds. 77  F.  R 766 

American  Graphophone  Co.  v.  Leeds. 87  F.  R 79,  493 

American  Graphophone  Co.  v.  Leeds 

&  Catlin  Co 140  F.  R 561 

American   Graphophone   Co.   i\   Na- 
tional Phonograph  Co 127  F.  R 643 

American  Graphophone  Co.?'.  Pickard.201  F.  R 487 

American  Graphophone  Co.  v.  Victor 

Talking  Machine  Co 188  F.  R 370 

American  Graphophone  Co.  v.  Univer- 
sal Talking  Machine  Co 151  F.  R 56,  57 

American  Graphophone  Co.  v.  Wal- 

cutt 86  F.  R 796 

American  Graphophone  Co.  v.  Wal- 

cutt 87  F.  R 485 

American  Hide  &  Leather  Splitting 

Machine  Co.  v.  Machine  Co 4  Fisher 146 

American  Insurance  Co.  v.  Canter ...  1  Pet 736 

American  Laundry  Mach.  Mfg.  Co.  v. 

Adams  Laundry  Machinery  Co. .  161  F.  R 431 

American  Lava  Co.  v.  Steward 155  F.  R 165,  214,  243 

American    Linoleum    Co.    v.    Nairn 

Linoleum  Co 44  F.  R 563 

American  Middlings   Purifier  Co.   v. 

Atlantic  Milling  Co 3  Bann.  &  Ard 773 

American   Middlings   Purifier  Co.   v. 

Christian 3  Bann.  &  Ard.  .706,  710,  751,  770, 

772,  789 


Hi  TABLE    OF    CITED    CASKS 

Names  of  Cases.  When  Reported.  Pages  in  thin  hook. 

American   Middlings  Purifier  Co.  v. 

Vail 15  Blatch 777 

American    Nicholson    Pavement    Co. 

r.  Elizabeth 1  Mann.  &  Aid 811 

American  Nicolson  Pavement   Co.  v. 

Elizabeth 4  Fisher 765,  775 

American    Paper    Bag    Co.    v.    Van 

Nortwick 52  F.  P 364 

American  Paper  Pail  Co.  v.  National 

Folding  Box  Co 51  F.  R 783 

American    Pneumatic    Tool    Co.    v. 

Bigelow  Co 77  F.  R 763 

American    Pneumatic    Tool    Co.    v. 

Fisher 69  F.  R 54 

American    Pneumatic    Tool    Co.    v. 

Philadelphia  Pneumatic  Tool  Co .  123  F.  R 439 

American  Road  Machine  Co.  v.  Pen- 
nock  &  Sharp  Co 45  F.  R 53 

American  Road  Machine  Co.  v.  Pen- 
nock  &  Sharp  Co 164  U.  S 35 

American  Roll  Gold  Leaf  Co.  v.  W.  H. 

Coe  Mfg.  Co 212  F.  R 259 

American  Roll-Paper  Co.  v.  Knopp .  .  44. F.  R 399 

American  Roll  Paper  Co.  v.  Weston.. 45  F.  R 69,  70,  439 

American  Roll  Paper  Co.  v.  Weston. .  51  F.  R 78 

American  Roll  Paper  Co.  v.  Weston. .  59  F.  R 95 

American  Saddle  Co.  v.  Hogg 6  Fisher 724 

American  Saddle  Co.  v.  Sager  Gear 

Co 122  F.  R ^ 601 

American  Sales  Book  Co.  v.  Carter- 

Crume  Co 150  F.  R 83 

American    School    Furniture    Co.    v. 

J.  M.  Sauder  Co 106  F.  R 648,  791 

American  Shoe-Tip  Co.  v.  Protector 

Co 2  Bann.  &  Ard 290 

American     Soda     Fountain     Co.     v. 

Sample 130  F.  R 558 

American  Specialty  Stamping  Co.  v. 

New  England  Enamelling  Co ...  178  F.  R 546 

American  Steel  &  Wire  Co.  v.  Den- 
ning Wire  &  Fence  Co 194  F.  R 4,  425 

American    Steel    Foundries   v.    Wolff 

Truck  Co 189  F.  R 165 


TABLE    OF    CITED    CASES  liii 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

American  Steel  &  Wire  Co.  v.  Mayer 

&  Englund  Co 121  F.  R 705 

American    Stoker   Co.    v.    Underfeed 

Stoker  Co 182  F.  R 380 

American  Street  Car  Advertising  Co. 

v.  Jones 122  F.  R 367,  681,  707 

American   Street   F.    M.    Co.    v.    St. 

Louis  F.  M.  Co 192  F.  R 813 

American  Sulphite  Pulp  Co.  v.  Bur- 
gess Sulphite  Fibre  Co 103  F.  R 763,  766,  772 

American  Sulphite  Pulp  Co.  v.  Bay- 
less  Pulp  &  Paper  Co 163  F.  R 696 

American  Sulphite  Pulp  Co.  v.  Car- 
thage Sulphite  Pulp  Co 224  F.  R 734 

American  Sulphite  Pulp  Co.  v.  Crown- 
Columbia  Pulp  &  Paper  Co 169  F.  R 674,  786 

American  Sulphite  Pulp  Co.  v.  De- 

Grasse  Paper  Co 157  F.  R 684 

American  Sulphite  Pulp  Co.  v.  De- 

Grasse  Paper  Co 193  F.  R 617 

American  Sulphite  Pulp  Co.  v.  Hinck- 
ley Fibre  Co 217  F.  R 786 

American  Sulphite  Pulp  Co.  v.  How- 
land  Falls  Pulp  Co 70  F.  R.  .54,  87,  243,  292,  536,  690 

American  Sulphite  Pulp  Co.  v.  How- 
land  FaUs  Pulp  Co 80F.R 69 

American    Thermos    Bottle    Co.    v. 

Semple 222  F.  R 683 

American  Well  Works  v.  F.  C.  Austin 

Mfg.  Co 98  F.  R 33,  51 

American  Writing  Mach.  Co.  v.  Wag- 
ner Typewriter  Co 151  F.  R 76 

Ames  v.  Howard 1  Sumner 228,  597 

Ames  &  Frost  Co.  v.  Woven  Wire 

Mach.  Co 59  F.  R 687 

Anchor    Cap    &    Closure    Corp.    v. 

Pritchard 232  F.  R 432 

Anderson  v.  Collins 122  F.  R 69,  231 

Anderson  v.  Eiler 46  F.  R 113,  127 

Anderson  v.  Eiler 50  F.  R 379 

Anderson  v.  Monroe 55  F.  R 117 

Anderson  v.  Pittsburgh  Lumber  Co .  .  47  F.  R 632,  820 

Anderson  v.  Saint 46  F.  R 22,  80,  131,  633 


liv  TABLE   OF   CITED   casks 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Anderson   Foundry   &   Much.   Works 

v.  Potts 108  F.  R 252 

Andrews  v.  Carman 2  Bann.  &  Ard 82 

Andrews  v.  Hovey 123  U.  S 112,  116,  578 

Andrews  v.  Landers 72  F.  It 373 

Andrews  v.  Long 12  F.  It 426 

Andrews  v.  Spear 3  Bann.  &  Ard 771 

Anilin  v.  Higgin 15  Blatch 288 

Anson  v.  Woodbury 12  O.  G 167 

Ansonia  Brass  &  Copper  Co.  v.  Elec- 
trical Supply  Co 32  F.  R 53 

Ansonia  Co.  v.  Electrical  Supply  Co. .  144  U.  S 51 

Anthracite  Separator  Co.  v.  Pollock.  .  175  F.  R 83 

Antisdel  v.  Bent 122  F.  R 53 

Antisdel  v.  Chicago  Hotel  Cabinet  Co .  89  F.  R 37,  372,  779 

Anton  v.  Grier  Bros.  Co 185  F.  R 40 

Appert  v.  Brownsville  Plate  Glass  Co. .  144  F.  R 159 

Apple  v.  American  Shoe  Machinery  & 

Tool  Co 232  F.  R 56,  57 

Aquarama  Co.  v.  Old  Mill  Co 124  F.  R 207,  775 

Arbetter    Felling     Machine     Co.     v. 

Lewis  Blind  Stitch  Machine  Co .  .  230  F.  R 157 

Archer  v.  Imperial  Machine  Co 207  F.  R 32 

Arey  v.  De  Loriea 55  F.  R 594 

Armat  Moving  Picture  Co.  v.  Edison 

Mfg.  Co 121  F.  R 768 

Armat  Moving  Picture  Co.  v.  Edison 

Mfg.  Co 125  F.  R 754 

A.  R.  Mosler  &  Co.  v.  Lurie 209  F.  R 718 

Armstrong,  Whit  worth  &  Co.  v.  Nor- 
ton   15  App.  D.  C 480 

Arnold  v.  Bishop 1  McArthur's  Patent  Cases,    64,  166 

Arnold  v.  Phelps 20  F.  R 421 

Aron  v.  Manhattan  Ry.  Co 26  F.  R 53 

Aron  v.  Manhattan  Railway  Co 132  U.  S 51,  246 

Arrott  v.  Standard  Sanitary  Mfg.  Co.  .  113  F.  R 685 

Arthur  v.  Griswold 55  New  York 508 

Asbestine  Mfg.  Co.  v,  Hepp 39  F.  R 487 

Asbestos  Felting  Co.  v.  Salamander 

Felting  Co 13  Blatch 791 

Asbestos  Shingle,  etc.,  Co.  v.  H.  W. 

Johns-MansviUe  Co 184  F.  R 73,  223,  292 

Ashcroft  v.  Walworth 1  Holmes 339,  341,  351 


TABLE    OF    CITED    CASES  1\- 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Ashley  v.  Samuel  C.  Tatum  Co 186  F.  R 217 

Ashley  v.  Samuel  C.  Tatum  Co 189  F.  R 22 

Ashley  v.  Weeks-Numan  Co 220  F.  R 50,  98,  217,  462 

Ashton  Valve  Co.  v.  Muffler  Co 8  U.  S.  App 221 

Asmus  v.  Alden 27  F.  R 29 

Asmus  v.  Freeman 34  F.  R 617,  621 

Aspinwall  Mfg.  Co.  v.  Gill 32  F.  R 333,  337,  344,  354 

Atherton  Mach.  Co.  v.  Atwood-Mor- 

rison  Co 102  F.  R 326,  471,  472 

Atkins  v.  Park 61  F.  R 347 

Atlantic    Dynamite    Co.    v.    Climax 

Powder  Mfg.  Co 72  F.  R 461 

Atlantic  Giant  Powder  Co.  v.  Ditt- 

mar  Powder  Mfg.  Co 9  F.  R 796 

Atlantic  Giant  Powder  Co.  v.  Good- 
year  3  Bann.  &  Ard 460,  767 

Atlantic  Giant  Powder  Co.  v.  Mow- 
bray   2  Bann.  &  Ard 459 

Atlantic  Works  v.  Brady 107  U.  S 21,  26 

Atlas  Glass  Co.  v.  Simonds  Mfg.  Co. .  .  102  F.  R 205 

Attorney  General  v.  Rumford  Chem- 
ical Works 2  Bann.  &  Ard 408 

Atwood  v.  Portland  Co 10  F.  R 302 

Austin  v.  Johnson 18  App.  D.  C 170 

Austin  v.  Johnson 95  O.  G 170 

Auto  Spring  Repairer  Co.  v.  Grinberg.175  F.  R 379 

Automatic   Pencil   Sharpener   Co.    v. 

Goldsmith  Bros 190  F.  R 396 

Automatic    Racking    Mach.    Co.    v. 

White  Racker  Co 145  F.  R 760 

Automatic    Recording    Safe    Co.    v. 

Bankers'  Registering  Safe  Co ...  224  F.  R 257 

Automatic    Recording    Safe    Co.    v. 

Burns  Co 231  F.  R 226 

Automatic    Switch    Co.    v.    Monitor 

Mfg.  Co 180  F.  R 547,  549 

Automatic   Weighing   Mach.    Co.    v. 

Pneumatic  Scale  Corp 166  F.  R 89,  172 

Autopiano   Co.   v.   American   Player 

Action  Co 222  F.  R 285,  289 

Autopiano    Co.    v.    Amphion    Piano 

Player  Co 186  F.  R 449 

Avery  &  Sons  v.  J.  I.  Case  Plow  Works.  148  F.  R 198,  454 


lVl  TABLE    OF    CITED    CASES 

B 

\  a  rues  of  Casus.  Where  Hi-portcd.  Pagix  111  thin  lnx>k. 

Babcock  v,  Clarkson 63  F.  R 548 

Babcock  v.  Degener 1  McArthur's  Patent  Cases,  106,  r.77 

Babcock    &    Wilcox    Co.    v.    Pioneer 

Iron  Works 31  F.  R 53 

Babcock    &    Wilcox    Co.    v.    Toledo 

Boiler  Works  Co 170  F.  R 548 

Badische    Anilin    &    Soda    Fabrik    v. 

Cummins 4  Bann.  &  Ard 92 

Badische    Anilin    &    Soda   Fabrik    v. 

Hamilton  Mfg.  Co 3  Bann.  &  Ard 209 

Badische    Anilin    &    Soda    Fabrik    v. 

Kalle 94  F.  R 26,  32,  72 

Badische    Anilin    &    Soda    Fabrik    v. 

Klipstein  &  Co 125  F.  R 86,  89 

Bailey  v.  Bussing 28  Connecticut 586 

Bailey    Wringing     Machine    Co.     v. 

Adams 3  Bann.  &  Ard 765 

Baker  v.  Crane  Co 138  F.  R 625,  813 

Baker  v.  F.  A.  Duncombe  Mfg.  Co..  .146  F.  R 51,  683 

Baker  v.  Whiting 1  Story 723 

Baker  Mfg.  Co.  v.  Washburn  &  Moen 

Mfg.  Co 18  F,  R 370 

Baldwin  v.  Bernard 5  Fisher 773 

Baldwin  v.  Kresl 76  F.  R 34 

Baldwin  v.  Sibley 1  Clifford 373 

BaU  v.  Coker 168  F.  R 190,  194 

Ball  v.  Coker 210  F.  R 4,  41 

Ball  v.  Langles 102  U.  S 292 

Ball  &  Socket  Fastener  v.  Cohn 90  F.  R 648 

Ball  Glove  Fastening  Co.  v.  Socket 

Fastener  Co 53  F.  R 833 

Ballard  v.  McCluskey 58  F.  R 277 

Ballard  v.  Pittsburg 12  F.  R 109,  789 

Baltimore  &  Potomac  Railroad  Co. 

v.  Fifth  Baptist  Church 108  U.  S 499 

Baltimore  Car-Wheel  Co.  v.  Bemis. .  .29  F.  R 649 

Bancroft  v.  Acton 7  Blatch 637 

Bank  of  Orleans  v.  Skinner 9  Paige  (N.  Y.) 647 

Bank  of  United  States  v.  Daniel 12  Peters 697 

Bantz  v.  Frantz 105  U.  S 295 

Barbed  Wire  Patent 143  U.  S.  .28,  55,  85,  93,  94,  235,  246 


TABLE    OF   CITED    CASES  lvU 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Barber  v.  National  Carbon  Co 129  F.  R 380 

Barker  v.  Shoots 18  F.  R 714 

Barker  v.  Stowe 4  Bann.  &  Ard 723 

Barker  v.  Stowe 15  Blatch 687 

Barnard  v.  Gibson 7  Howard 788 

Barnes    Sprinkler    Co.    v.    Walworth 

Mfg.  Co 51  F.  R 75,  70S 

Barney  v.  Peck 16  F.  R 510 

Barrett  v.  Hall 1  Mason 65,  562 

Barron  v.  Baltimore 7  Peters 185,  199 

Barry  t>.  Harpoon  Castor  Mfg.  Co .  .  .209  F.  R 56 

Bartlett  v.  Holbrook 1  Gray  (Mass.) 366 

Barton  v.  White 144  Mass 351 

Bate  Refrigerating  Co.  v.  Eastman  .  .  11  F.  R 798 

Bate  Refrigerating  Co.  v.  Eastman  .  .24  F.  R 254 

Bate  Refrigerating  Co.  v.  Gillett  ....  13  F.  R 205 

Bate  Refrigerating  Co.  v.  Gillett 20  F.  R 207 

Bate  Refrigerating  Co.  v.  Gillett 24  F.  R 796 

Bate  Refrigerating  Co.  v.  Gillett 28  F.  R 831 

Bate  Refrigerating  Co.  v.  Gillett 30  F.  R 496,  795,  797 

Bate  Refrigerating  Co.  v.  Gillett 31  F.  R 464 

Bate  Refrigerating  Co.  v.  Hammond .  .  129  U.  S 206,  207 

Bate  Refrigerating  Co.  v.  Sulzberger.  .  157  U.  S 205 

Bates  v.  Coe 98  U.  S 82,  510,  685 

Bates  v.  Railroad  Co 32  F.  R 620 

Bath  v.  Caton 37  Michigan 506 

Battin  v.  Taggert 17  Howard.  .92,  107,  124,  126,  229, 

289,  302 

Bauer  t>.  O'Donnell 229  U.  S 384,  389 

Beach  v.  Box-Machine  Co 63  F.  R.  .28,  164,  292,  441,  448,  535 

Beach  v.  Hatch 153  F.  R 637,  808 

Beach  v.  Hobbs 82  F.  R 292,  721 

Beale  v.  Spate 74  F.  R 588 

Bean  v.  Smallwood 2  Story 52 

Bechman  v.  Wood 89  O.  G 172 

Beckwith   v.    Malleable    Iron    Range 

Co 174  F.  R 72,  84,  557 

Beckwith   v.   Malleable   Iron   Range 

Co 207  F.  R 830 

Bedford  v.  Hunt 1  Mason 90,  100 

Beecher  Mfg.   Co.   v.   Atwater  Mfg. 

Co 114  U.  S 40 

Beedle  v.  Bennett 122  U.  S 109,  115,  676 


Lviil  TABLE    OF   CITED    CASES 

Names  of  Cases.                                                    Where  Reported.             Pages  in  this  book. 

Beer  v.  Walbridge 100  F.  R 684 

lidding  v.  Turner 8  Match 374 

Belknap  v.  Scnild 161  U.  S 194,  804,  805,  807 

Bell  v.  Daniels 1  Bond 126 

Bell  v.  Daniels 1  Fisher 99,  175 

Bell  v.  Hearne 19  Howard 213 

Bell  v.  MacKinnon 148  F.  R 259 

BeU  v.  Stamping  Co 32  F.  R <Y2:\,  s;;i 

Bellas  v.  Hays 5  Sergeant  &  Rawle  (Penn.) .  .  .  573 

Bell  Telephone  Co.  v.  Pennsylvania.  .7  Eastern  Reporter 192 

Bement  v.  National  Harrow  Co 186  U.  S 383 

Bemis  v.  Charles  Stevens  <fe  Bros 177  F.  R 564 

Bemis  Box  Car  Co.  v.  J.  G.  Brill  Co .    .200  F.  R 622 

Benbow-Brammer  Mfg.   Co.   v.   Hef- 

f ron-Tanner  Co 144  F.  R 259 

Benbow-Brammer  Mfg.  Co.  v.  Simp- 
son Mfg.  Co 132  F.  R 454 

Benbow-Brammer  Mfg.  Co.  v.  Straus .  166  F.  R 448 

Bene  v.  Jeantet 129  U.  S 228 

Benjamin  Electric  Mfg.  Co.  v.  Dale 

Co 158  F.  R 86,  463 

Bennet  v.  Fowler 8  Wallace 588 

Bennett  v.  Schooley 77  F.  R 723 

Berardini  v.  Tocci 190  F.  R 5 

Bernardin  v.  Northall 78  O.  G 156,  158,  159,  173 

Bernardin  v.  Seymour 10  App.  D.  C 166 

Berry  v.  Stockwell 9  O.  G 167 

Besserv.  Merrillat  Culver  Core  Co .  .  .226  F.  R 256 

Bethlehem  Steel  Co.  v.  Niles-Bement- 

Pond  Co 166  F.  R 564 

Bettendorf  Patents  Co.  v.  J.  R.  Little 

Metal  Wheel  Co 123  F.  R 53 

Bevin  v.  BeU  Co 9  Blatch 178 

Bevin  Bros.  Mfg.  Co.  v.  Starr  Bros. 

BellCo.  .  ., 114  F.  R 52,  462 

B.  F.  Avery  &  Sons  v.  J.  I.  Case  Plow 

'  Works 174  F.  R 198,  454 

Bibb  v.  Allen 149  U.  S 592 

Bicknell  v.  Todd 5  McLean 359 

Bidwell  v.  Toledo  Consolidated,  etc., 

Ry 72  F.  R 498 

Bierce  v.  Stocking 11  Gray  (Mass.) 564 

Bigelow  v.  Louisville 3  Fisher 365 


TABLE    OF    CITED    CASES  lix 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Bignall  v.  Harvey 5  Bann.  &  Ard 93 

Bignall  v.  Harvey 18  Blatch 785 

Billings  &  Spencer  Co.  v.  Van  Wag- 
oner &  Williams  Hardware  Co .  .  98  F.  R 57 

Birdsall  v.  Coolidge 93  U.  S 620 

Birdsall  v.  McDonald 1  Bann.  &  Ard 109,  127 

Birdsall  v.  Mfg  Co 2  Bann.  &  Ard 796 

Birdsall  v.  Mfg  Co 1  Hughes 791 

Birdsall  v.  Perego 5  Blatch 366 

Birdsell  v.  Shaliol 112  U.  S 718 

Birmingham    Cement    Mfg.    Co.    v. 

Gates  Iron  Works 78  F.  R 710 

Bischoff  v.  Wethered 9  Wallace 93,  578,  584 

Bissell  Carpet-Sweeper  Co.  v.  Goshen 

Sweeper  Co 72  F.  R 785 

Black  v.  Hubbard 3  Bann.  &  Ard 321 

Black  v.  Munson 14  Blatch 617,  618 

Black  v.  Sto^e 33  Alabama 338 

Black  Diamond  Coal  Co.   v.   Excel- 
sior Coal  Co 156  U.  S 234,  433 

Blackledge  v.  Weir  &  Craig  Mfg.  Co. .  .  108  F.  R 354 

Blades  v.  Rand 27  F.  R 232,  235 

Blagrove  v.  Ringgold 2  Cranch's  Circuit  Court  Re- 
ports   607 

Blair  v.  Jeannette-McKee  Glass 

Works 161  F.  R 238 

Blair  v.  Lippincott  Glass  Co 52  F.  R 485 

Blake  v.  Robertson 94  U.  S 439,  813 

Blake  v.  San  Francisco 113  U.  S 51 

Blakey  v.  Kurtz 78  F.  R 770 

Blanchard  v.  Eldridge 1  Wallace,  Jr 484 

Blanchard  v.  Putnam 8  Wallace 589,  609 

Blanchard  v.  Reeves 1  Fisher 427,  762 

Blanchard  v.  Sprague 1  Cliff 376 

Blanchard's  Gun-Stock  Turning  Fac- 
tory v.  Warner 1  Blatch 312 

Blandy  v.  Griffith 3  Fisher 177,  690 

Blandy  v.  Griffith 6  Fisher 722,  723,  724 

Blauvelt  v.  Interior  Conduit  &   In- 
sulation Co 80  F.  R 380 

Blessing  v.  Copper  Works 34  F.  R 519,  684 

Bliss  v.  Brooklyn 8  Blatch j 308 

Bliss  v.  Brooklyn 10  Blatch 98 


lx  TABLE    OF   CITED    CASES 

Names  of  Cases.                                                     WTiere  Reported.               Pages  in  this  book. 

Bliss  v.  Brooklyn 4  Fisher 487 

Bliss  v.  Haight 3  Fisher 437 

Bliss  v.  Merrill 33  F.  R 70 

Bliss  v.  Read 106  F.  R 725 

Bloomer  v.  Gilpin 4  Fisher 375 

Bloomer  v.  McQuewan 14  Howard 193,  259,  310,  311, 

320,  361 

Bloomer  v.  Millinger 1  Wallace 320 

Bloomer  v.  Stolley 5  McLean 310 

Blount  v.  Societe 53  F.  R 753,  758,  783 

Blumenthal  v.  Burrell 43  F.  R 35 

Board  of  Commissioners  v.  Gorman .  .  19  Wallace 733 

Board  of  Trade  v.  Tucker 221  F.  R 802 

Bobbs  Merrill  Co.  v.  Straus 210  U.  S 391 

Boesch  v.  Graff 133  U.  S.  .326,  348,  622,  623,  735, 

836 

Bogart  v.  Hinds 25  F.  R 484 

Bolte  &  Weyer  Co.  v.  Knight  Light 

Co 180  F.  R 462 

Bonnette  Arc  Lawn  Sprinkler  Co.  v. 

Koehler 82  F.  R 241 

Bonsack  MachineCo.  v.  Cigarette  Co .  64  F.  R 798 

Bonsack  Machine  Co.  v.  Elliot 63  F.  R 4 

Bonsack  Mach.  Co.  v.  Hulse 57  F.  R 344 

Bonsack  Mach.  Co.  v.  Smith 70  F.  R 206,  584 

Boomer  v.  Powder  Press  Co 13  Blatch 786 

Booth  v.  Seevers 19  O.  G 381 

Boss  Mfg.  Co.  v.  Thomas 182  F.  R 56 

Bossert  Electric  Construction  Co.  v. 

Pratt  Chuck  Co 179  F.  R 239 

Boston  &  R.  Electric  Ry.  Co.  v.  Be- 

mis  Car-Box  Co . .  .80  F.  R 447 

Boston    &    Revere    Electric    Street- 
Railway  Co.  v.  Bemis  Car-Box 

Co 98  F.  R 730 

Boston  Electric  Co.  v.  Holtzer 41  F.  R 763 

Boston  Iron  Co.  v.  King 2  Cushing  (Mass.) 840 

Boston  Lasting  Mach.  Co.  v.  Wood- 
ward  53  F.  R 243,  443 

Boston  Lasting  Mach.  Co.  v.  Wood- 
ward  82  F.  R 490 

Boston     Pneumatic     Power    Co.     v. 

Eureka  Patents  Co 139  F.  R 402 


TABLE    OF   CITED    CASES  lxi 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Boston  Woven  Hose  &  Rubber  Co.  v. 

Pennsylvania  Rubber  Co 164  F.  R 249 

Boston    Woven    Hose    Co.    v.    Star 

Rubber  Co 40  F.  R 501,  503 

Bottle  Seal  Co.  v.  De  La  Vergne  Co .  .  .47  F.  R 684 

Bourne  v.  Goodyear 9  Wallace 407 

Bowers  v.   Atlantic,    Gulf   &    Pacific 

Co 104  F.  R 473,  501,  503 

Bowers  v.  Lake  Superior  Contracting 

Co 149  F.  R 373 

Bowers  v.  Pacific  Coast  Co 81  F.  R 766 

Bowers  v.  San  Francisco  Bridge  Co .  .  69  F.  R 289,  535,  766 

Bowers  v.  San  Francisco  Bridge  Co .  .  91  F.  R 83 

Bowers  v.  Von  Schmidt 63  F.  R 39,  75,  89,  448 

Bowers  Dredging  Co.  v.  New  York 

Dredging  Co 77  F.  R 492,  759,  763,  766 

Bowers  Dredging  Co.  v.  New  York 

Dredging  Co 80  F.  R 710,  761 

Bowker  v.  Dows 3  Bann.  &  Ard 495 

Bowman  v.  De  Graw 60  F.  R 94 

Boyce  v.  Stewart-Warner  Speed- 
ometer Corporation 220  F.  R 103,  165,  754 

Boyd  v.  Cherry 50  F.  R 494 

Boyd  v.  Janesville  Hay  Tool  Co 158  U.  S 447,  589 

Boyd  v.  M'Alpin 3  McLean 338,  762 

Boyden  v.  Burke 14  Howard 260 

Boyer  v.  Keller  Tool  Co 127  F.  R 57,  226,  258 

Bracewell  v.  Passaic  Print  Works 107  F.  R 134,  275 

Braddock  Glass  Co.  v.  Macbeth 64  F.  R 801 

Bradford  v.  Bradford 5  Connecticut 545 

Bradford  v.  Expanded  Metal  Co 146  F.  R 131 

Bradley  v.  Dull 19  F.  R 352 

Bradley  v.  Eccles 126  F.  R 19 

Bradley  v.  Eccles 144  F.  R 96 

Bradley  &  Hubbard  Mfg.  Co.  v.  The 

Charles  Parker  Co 17  F.  R 767 

Bradley  Mfg.  Co.  v.  Eagle  Mfg.  Co.  .57  F.  R. . .  .543,  544,  545,  546,  642 

Bradley  Mfg.  Co.  v.  Eagle  Mfg.  Co .  .58  F.  R 697 

Bragg  v.  City  of  Stockton 27  F.  R 637 

Bragg  Mfg.  Co.  v.  Hartford 56  F.  R 676,  677 

Brainard  v.  Cramme 12  F.  R 4,  277,  304 

Brammer  v.  Jones 3  Fisher 776 

Brammer  v.  Schroeder 106  F.  R 135,  447 


lxii  TABLE    OF   CITED    CASES 

\.i b  "1  Coses.  Where  Reported.  Pages  in  this  book. 

Brander    Hunger   ( !o.    v.    Waterbury 

Button  Co 106  F.  U 676 

Branson  v.  Kutz 105  F.  R 424 

Bray  v.  Denning 56  F.  R 492 

Bray  v.  Hartshorn 1  Cliff 5'Jli 

Bredin  v.  Solmson 132  F.  R 448 

Bredin  v.  Solmson 145  F.  R 485 

Brennan  &    Co.   v.   Dowagiac  Mfg. 

Co 162  F.  R 808 

Brickill  v.  Baltimore 60  F.  R 613,  615 

Brickill  v.  Hartford 49  F.  R 549,  691,  697 

Brickill  v.  Hartford 57  F.  R.  .47,  529,  533,  534,  551,  684 

Brickill  v.  New  York 112  F.  R 380,  827 

Bridgeport    Wood    Finishing    Co.    v. 

Hooper 5  F.  R 81 

Briggs  v.  Central  Ice  Co 54  F.  R 563 

Briggs  v.  Duell 93  F.  R 53,  54 

Briggs  ».  United  Shoe  Machinery  Co .  .239  U.  S 469 

Brig  Struggle  v.  United  States 9  Cranch 412 

Brill    v.    Delaware    County    Electric 

Ry.  Co 109  F.  R 601 

Brill  v.  North  Jersey  St.  Ry.  Co 124  F.  R 29,  238 

Brill  v.  Peckham  Motor  Truck  Co ...  189  U.  S 785 

Brill  v.  St.  Louis  Car  Co 80  F.  R 182,  762 

Brinkerhoff  v.  Aloe 146  U.  S 40 

Brislin  v.  Carnegie  Steel  Co 118  F.  R 188,  431 

Britton  v.  White  Mfg.  Co 61  F.  R 71,  139,  533,  573 

Broadnax  v.  Transit  Co 5  Bann.  &  Ard 301 

Bromley  Bros.  Carpet  Co.  v.  Stew- 
art  51F.R 27 

Bronk  v.  Charles  H.  Scott  Co 211  F.  R 667 

Bronson  v.  Kinzie 1  Howard 186 

Brookfield  v.  Elmer  Glass  Works 132  F.  R 787 

Brookfield  v.  Novelty  Glass  Co 124  F.  R 55 

Brookfield  v.  Novelty  Glass  Co 132  F.  R 798 

Brookfield  v.  Novelty  Glass  Co 170  F.  R 644 

Brooks  v.  Ashburn 9  Georgia 491 

Brooks  v.  Bicknell 3  McLean 275,  318,  558,  775 

Brooks  v.  Byam 2  Story 338,  364,  375 

Brooks  v.  Fiske 15  Howard 222,  432 

Brooks  v.  Jenkins 3  McLean.  .272,  319,  352,  353,  560, 

573,  583 
Brooks  v.  Miller 28  F.  R 676 


TABLE    OF   CITED    CASES  lxiii 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Brooks  v.  Norcross 2  Fisher 69 

Brooks  v.  Sacks 81  F.  R 95 

Brothers  v.  Lidgerwood  Mfg  Co 223  F.  R 259,  441 

Brown  v.  Davis 116  U.  S 434,  439 

Brown  v.  Deere 6  F.  R 789 

Brown  v.  District  of  Columbia 3  Mackey 491 

Brown  v.  District  of  Columbia 130  U.  S 27,  31 

Brown  v.  Duchesne 19  Howard 182,  185,  202 

Brown  v.  Hall 6  Blatch 686 

Brown  v.  Huntington  Piano  Co 134  F.  R 44 

Brown  v.  Jackson 3  Wheaton 341 

Brown  v.  Lanyon 179  F.  R 813,  827 

Brown  v.  Lapham 27  F.  R 372 

Brown  v.  Piper 91  U.  S 52,  570,  683,  737 

Brown    v.    Puget    Sound    Reduction 

Co 110  F.  R 435 

Brown  v.  Shannon 20  Howard 469 

Brown    Bag-Filling    Mach.     Co.    v. 

Drohen 171  F.  R 629,  S34 

Brown    Bag-Filling    Mach.     Co.     v. 

Drohen 175  F.  R 821 

Brown  H.  &  C.  Mach.  Co.  v.  King 

Bridge  Co 107  F.  R 37 

Brown    Mfg.    Co.    v.    Bradley    Mfg. 

Co. 51  F.  R 222 

Brown  Mfg.  Co.  v.  Deere 21  F.  R 29 

Brown  Mfg.  Co.  v.  Deere 51  F.  R 722 

Brown  Mfg.  Co.  v.  Mast 53  F.  R 54,  708 

Brown  &  Sharpe  Mfg.  Co.  v.  Coates 

Clipper  Mfg.  Co 195  F.  R 681 

Browning  v.  Colorado  Telephone  Co .  61  F.  R 51 

Brownson    v.     Dodson-Fisher-Brock- 

mann  Co 71  F.  R 54 

Bruise  v.  Peck 54  F.  R 544 

Brunner's  Appeal 1  O.  G , .  •  .  152 

Brunswick-Balke-Collender    Co.     v. 

Backus,  etc.,  Co 153  F.  R 218 

Brunswick-Balke-Collender     Co.     v. 

Koehler  &  Hinrichs 115  F.  R 751,  766 

Brunswick-Balke-Collender     Co.     v. 

Rosatto 159  F.  R 241 

Brunswick-Balke-Collender     Co.     v. 

Wolf,  Saver  &  Heller 222  F.  R 490 


lxiv  TABLE    OF    CITED    (ASKS 

Names  of  Cases.  Wliere  Reported.  Panes  in  this  book. 

Brush  r.  Condit 132  U.  S 438 

Brush  Electric  Co.  v.   Accumulator 

Co 47  F.  B 31,  207,  277,  421 

Brush    Electric   Co.    v.    Accumulator 

Co 50  F.  B 776 

Brush  Electric  Co.  v.  California  Elec- 
tric Light  Co 52  F.  R.  .341,   357,   358,   364,   369, 

375,  486 

Brush  Electric  Co.  v.  Electric  Co 43  F.  R 447 

Brush  Electric  Co.  v.  Electric  Co.  of 

San  Jose 49  F.  R 486 

Brush  Electric  Co.  v.  Electric  Co.  of 

San  Jose 51  F.  R 734 

Brush  Electric  Co.  v.  Electric  Imp. 

Co 52  F.  R 138,  243,  447 

Brush    Electric    Co.    v.    Ft.    Wayne 

Electric  Co 40  F.  R 137,  265,  447 

Brush    Electric    Co.    v.    Ft.    Wayne 

Electric  Co 44  F.  R 105 

Brush    Electric   Co.    v.    Julien    Elec- 
tric Co 41  F.  R 31,  207,  421 

Brush  Electric  Co.   v.   Storage  Bat- 
tery Co 64  F.  R 761,  763,  769,  771 

Brush  Electric  Co.  v.  Western  Elec- 
tric Co 43  F.  R 137 

Brush  Electric  Co.  v.  Western  Elec- 
tric Co 76  F.  R 544,  717 

Brush-Swan    Electric    Light    Co.    v. 

Electric  Co 48  F.  R 486 

Bryce  Bros.  v.  Seneca  Glass  Co 140  F.  R 115 

Buchanan  v.  Perkins  Electric  Switch 

Mfg.  Co 135  F.  R 50 

Buck  v.  Timony 78  F.  R 330 

Buckingham  v.  Iron  Co 51  F.  R 53 

Buerk  v.  Imhaeuser 2  Bann.  &  Ard 798 

Buffington's    Iron    Building    Co.    v. 

Eustis 65  F.  R 222,  423 

Buhl  v.  Stephens 84  F.  R 364 

Bull  v.  Pratt 1  Connecticut 373 

Bullock  Electric  Co.  v.  Westinghouse, 

etc 129  F.  R 493 

Bullock  Electric  Mfg.  Co.  v.  Crocker- 
Wheeler  Co 141  F.  R 226,  257,  576 


TABLE    OF   CITED    CASES  lxv 

Names  of  Cases.                                                     Where  Reported.               Puges  in  this  book. 

Bullock  Printing-Press  Co.  v.  Jones.  .3  Bann.  &  Ard 787 

Bundy  Mfg.  Co.  v.  Columbian  Co.    .  .  59  F.  R 236 

Bundy    Mfg.    Co.    v.    Detroit   Time- 
Register  Co 94  F.  R 435,  441 

Bundy   Mfg.   Co.   v.   Time  Recorder 

Co 64  F.  R 447 

Bunker  v.  Stevens 26  F.  R 002 

Burdell  v.  Comstock 15  F.  R 077 

Burdell  v.  Denig 92  U.  S 300,  566,  585 

Burden  v.  Corning 2  Fisher 272,  691 

Burdett  v.  Estey 5  Bann.  &  Ard 273 

Burdett  v.  Estey 15  Blatch 277 

Burdett  v.  Estey 3  F.  R 828 

Burdon  Wire  <fe  Supply  Co.  t>.  Wil- 
liams   128  F.  R 422 

Burdsall  v.  Curran 31  F.  R 547 

Burke   Electric   Co.    v.    Independent 

Pneumatic  Tool  Co 234  F.  R 118,  119,  217,  536 

Burns  v.  Myer 100  U.  S 251 

Burpee  v.  Guggenheim 226  F.  R 355 

Burr  v.  De  La  Vergne 102  N.  Y 326 

Burr  v.  Duryee. ' 2  Fisher 366,  372 

Burr  v.  Duryee 1  Wallace 292,  428,  438,  440 

Burrall  v.  Jewett 2  Paige 98 

Burrell  v.  Hackley 35  F.  R 297,  656 

Burrowes  v.  Carrom-Archarena  Co .  .  190  F.  R 652 

Burt  v.  Evory 133  U.  S 21,  46,  82 

Busch  v.  Jones 184  U.  S 4 

Buser    v.     Novelty    Tufting    Mach. 

Co 151  F.  R 90,  96 

Bush  &   Lane  Piano  Co.   />.   Becker 

Bros 209  F.  R 50,  217,  462 

Bush  &   Lane  Piano   Co.    v.   Becker 

Bros 234  F.  R 633,  820 

Buss  v.  Putney 38  N.  H 365 

Bussard  v.  Catalino 2  Cranch's  Circuit  Court  Re- 
ports   604 

Bussell  Trimmer  Co.  v.  Stevens 137  U.  S 51 

Bussey  v.  Mfg.  Co 110  U.  S 40 

Butler  v.  Bainbridge 29  F.  R 536,  579 

Butler  v.  Steckel 137  U.  S 27,  30 

Butterworth  v.  Hill 114  U.  S 157 

Butterworth  v.  Hoe 112  U.  S 154,  158,  159 


lxvi  TABLE   OF   CITED   casks 

Names  *>f  Canes.  Where  ll<-i>nrie<l.  Paget  in  ilii"  imok. 

Mutton  Fastener  Co.  r.  Lucas 28  F.  R 65 

Hut/,  Thermo-Electric  Co.  v.  Electric 

Co 36  F.  R 444,  44(5 

Buzzell  v.  Fifield 7  F.  R 30 

Byam  v.  Eddy 2  Blal  ch 457 

ByaiD  v.  Karr 1  Curtis 401 

Byerly  v.  Barber  Asphalt  Paving  <  !o.230  F.  R 83 

Byerly  v.  Philip  Carey  Co       225  F.  R 712 

Byram  v.  Friedberger 87  F.  R 82,  462 


Cadillac  Motor  Car  Co.  v.  Austin. .  .  .225  F.  R 56 

Cahoon  v.  Ring 1  Cliff 75,  440,  564 

Cahoone  Barnet  Mfg.  Co.  v.  Rubber 

&  Celluloid  Harness  Co 45  F.  R 22,  51,  489 

Cain  v.  Park 14  App.  D.  C 169 

Calculagraph  Co.  v.  Automatic    Time 

Stamp  Co 187  F.  R 709 

Calculagraph  Co.  v.  Wilson 132  F.  R 406,  502 

Calculagraph  Co.  v.  Wilson 136  F.  R 800 

Caldwell  v.  Jackson 7  Cranch 603 

Caldwell  v.  Waters 4   Cranch's  Circuit  Court  Re- 
ports    778 

California  Electric  Works  v.  Fink  .  .  .  47  F.  R 695 

California  Electric  Works  v.  Henzel.  .48  F.  R 761,  787 

California  Paving  Co.  v.  Molitor.  ...  113  U.  S 739,  798 

Callaghan  v.  Myers 128  U.  S 806,  812,  840 

Cambria  Iron  Co.  v.  Carnegie  Steel 

Co 224  F.  R 827,  828 

Cameron  Septic  Tank  Co.  v.  Knox- 

ville 227  U.  S 204 

Cammack  v.  Johnson 2  New  Jersey  Equity 778 

Cammeyer  v.  Newton 94  U.  S 185,  194 

Campbell   v.    American    Shipbuilding 

Co 179  F.  R 255 

Campbell  v.  Bailey 45  F.  R 82 

Campbell  v.  City  of  New  York 81  F.  R 561 

Campbell  v.  Day 16  Vermont 338 

Campbell  v.  Haverhill 155  U.  S 508,  550,  701 

Campbell  v.  Magnet  Light  Co 175  F.  R 501 

Campbell  ».  New  York 35  F.  R 113,  147,  722,  726 

Campbell  v.  New  York 36  F.  R 118,  119 


TABLE    OF    CITED    CASES  lxvii 

Names  of  Cases.  Where  Reported.  Pages  in  thi9  book. 

Campbell  v.  New  York 47  F.  R 117 

Campbell  v.  New  York 105  F.  R 828 

Campbell  v.  Ward 12  F.  R 677 

Campbell    Mfg.    Co.    v.    Manhattan 

Ry.  Co 49  F.  R 707 

Campbell  Printing-Press  Co.   v.   Du- 
plex Printing-Press  Co 86  F.  R 439.  577 

Campbell  Printing-Press  Co.  v.  Man- 
hattan Ry.  Co 49  F.  R 637 

Campbell  Printing-Press  Co.  v.  Mar- 
den 64  F.  R 95,  136,  226,  238,  241 

Campbell  Printing-Press  Co.  v.  Prieth.77  F.  R 766 

Canan  v.  Mfg.  Co 23  F.  R 207 

Canda   v.   Michigan    Malleable    Iron 

Co 152  F.  R 806,  813 

Canda  v.  Mich.  Malleable  Iron  Co ....  124  F.  R 55,  82,  241,  493 

Cansler  v.  Eaton 2  Jones'  Equity  Cases  (N.  C.)  .   343 

Canter  v.  Insurance  Companies 3  Peters 606 

Canton  Steel  Roofing  Co.  v.  Kanne- 

berg 51  F.  R 641 

Cantrell  v.  Wallick 117  U.  S 14,  15,  82,  93,  440 

Capital  Sheet  Metal  Co.  v.  Kinnear 

&  Gager  Co 87  F.  R 53 

Carborundum  Co.  v.  Electric  Smelting, 

etc.,  Co 203  F.  R 808,  812,  817 

Carew  v.  Fabric  Co 1  Holmes 306 

Carey  v.  Miller 34  F.  R 763 

Carey  v.  Spring  Bed  Co 26  F.  R 778 

Card?;.  Standard  Coal  &  Coke  Co .  .  .  .202  F.  R 652 

Carl  L.  Jensen  Co.  v.  Clav 53  F.  R 225 

Carlton  v.  Bokee 17  Wallace 134,  226,  243,  538 

Carnegie  Steel  Co.  v.  Breslin 224  F.  R 238,  447 

Carnegie  Steel  Co.  v.  Brislin 124  F.  R 236,  447 

Carnegie  Steel  Co.  v.  Cambria  Iron 

Co 89  F.  R 72 

Carnegie  Steel  Co.  v.  Cambria  Iron 

Co 185  U.  S 4,  83,  269,  715 

Carnegie  Steel  Co.  v.  Colorado  Fuel  & 

Iron  Co 165  F.  R 673 

Carnrick  v.  McKesson 8  F.  R 685,  688,  689 

Carpenter  Machine  Co.  v.  Searle ....  52  F.  R 360 

Carr  v.  Rice 1  Fisher 219,  308,  431 

Carroll  v.  Goldschmidt 83  F.  R 545 


lxviii  TABLE   OF  CITED   casks 

Names  of  Cases.  Where  Reported.  Pages  in  this  hook. 

( Jarroll  v.  Morse 9  0.fi 308 

Carsteadt  v.  Corset  Co 13  Blatch 801 

Carter  v.  Baker 4  Fisher 625 

Carter  v.  Baker 1  Sawyer 463,  5(14 

Carter  v.  Fry 54  F.  R 766 

Carter  v.  Wollschlaeger 53  F.  R 753,  757,  758,  772 

Carter  Crume  Co.  v.  Am.  Sales  Book 

Co 124  F.  R 423 

Carter-Crume  Co.  v.  Ashley 68  F.  R 758,  762,  768 

Carter  Mach.  Co.  v.  Hanes 70  F.  R 98,  438 

Cartridge  Co.  v.  Cartridge  Co 112  U.  S 275,  461 

Carty  v.  Kellogg 7  App.  D.  C 169 

Carver  v.  Hyde 16  Peters 221 

Carver  v.  Mfg.  Co 2  Story 133,  509 

Cary  v.  Lovell  Mfg.  Co 31  F.  R 707 

Cary  Mfg.  Co.  v.  Acme  Flexible  Clasp 

Co 108  F.  R 799,  801 

Cary  Mfg.  Co.  v.  Acme  Flexible  Clasp 

Co 187  U.  S 799 

Cary  Mfg.  Co.  v.  De  Haven 88  F.  R 683 

Cary  Mfg.  Co.  v.  Neal 98  F.  R 22 

Case  v.  Brown 2  Wallace 234,  4:33 

Case  v.  Morey 1  New  Hampshire 328 

Case  v.  Redfield 4  McLean 338 

Cash  Register  Co.  v.  Cash  Indicator 

Co 156  U.  S 54 

Castle  v.  Hutchinson 25  F.  R 190 

Caverly  v.  Deere 52  F.  R 35,  95 

Cawood  Patent 94  U.  S..  .72,  425,  717,  821,  822,  834 

Cazier  v.  Mackie-Lovejoy  Mfg.  Co. ...  138  F.  R 454,  501 

Celluloid  Mfg.  Co.  v.  American  Zy- 

lonite  Co 35  F.  R 32 

Celluloid  Mfg.  Co.  v.  Arlington  Mfg. 

Co 44  F.  R 443 

Celluloid  Mfg.  Co.  v.  Cellonite  Mfg. 

Co 40  F.  R 824,  832,  836,  837 

Celluloid  Mfg.  Co.  v.  Cellonite  Mfg. 

Co 42  F.  R 243 

Celluloid  Mfg.  Co.  v.  Chandler 27  F.  R 603 

Celluloid    Mfg.    Co.    v.    Chrolithion 

Collar  &  Cuff  Co 23  F.  R 29 

Celluloid  Mfg.  Co.  v.  Crane  Chemical 

Co 36  F.  R 32 


TABLE    OF   CITED    CASES  lxix 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Celluloid  Mfg.  Co.  v.  Crofut 24  F.  R 108 

Celluloid  Mfg.  Co.  v.  Eastman  Dry 

Plate  Co 42  F.  R 763 

Celluloid  Mfg.  Co.  v.  Mfg.  Co 34  F.  R 764 

Celluloid  Mfg.  Co.  v.  Noyes 25  F.  R 53 

Celluloid  Mfg.  Co.  v.  Russell 37  F.  R 215,  536 

Celluloid  Mfg.  Co.  v.  Tower 2G  F.  R 46,  708 

Celluloid  Mfg.  Co.  v.  Vulcanite  Co. .  .  13  Blatch 648 

Celluloid  Mfg.  Co.  v.  Zylonite  Co. .  .  .27  F.  R 298 

Celluloid  Mfg.  Co.  v.  Zylonite  Co 30  F.  R 494 

Celluloid  Mfg.  Co.  v.  Zylonite  Co. ...  34  F.  R 516 

Central    Brass    &    Stamping    Co.    v. 

Stuber 220  F.  R 353 

Central  Foundry  Co.  v.  Coughlin 141  F.  R 433,  444 

Century  Electric  Co.  v .  Westinghouse 

Electric  &  Mfg.  Co 191  F.  R.  .  .  .86,  231,  259,  448,  450 

Cerealine  Mfg.  Co.  v.  Bates 77  F.  R 269 

Cerealine  Mfg.  Co.  v.  Bates 101  F.  R 216,  269 

Chadeloid  Chemical  Co.   v.   Chicago 

Wood  Finishing  Co 180  F.  R 475 

Chadeloid  Chemical  Co.  v.  Johnson .  .  .203  F.  R 369,  370,  788 

Chadeloid    Chemical   Co.    v.    F.    W. 

Thurston  Co 220  F.  R 225,  422 

Chadeloid   Chemical   Co.    v.    Wilson 

Remover  Co 220  F.  R 564 

Chaffee  v.  Belting  Co 22  Howard 320,  361 

Chambers  v.  Smith 5  Fisher 360,  365,  375 

Chambers-Bering-Quinlan  Co.  v.  Fa- 

ries 75  F.  R 136,  221 

Chandler  v.  Ladd 1  McArthur's  Patent  Cases ....     22 

Charles  Boldt  Co.  v.  Nivison-Weiskopf 

Co 194  F.  R 22,  56 

Charles  Boldt  Co.  ^.Turner  Bros.  Co..  199  F.  R 22 

Charmbury  v.  Walden 141  F.  R 259 

Chase  v.  Fillebrown 58  F.  R 73,  83,  537,  557 

Chase  v.  Tuttle 27  F.  R 649 

Chase  v.  Walker 3  Fisher 326 

Chauche  v.  Pare 75  F.  R 328 

Cheatham  Electric  Switching  Device 

Co.  v.  Transit  Development  Co .  .  191  F.  R 474 

Cheatham  Electric  Switching  Device 

Co.  v.  Transit  Development  Co .  .  209  F.  R 697 

Cheever  v.  Wilson 9  Wallace 590 


]XX  TABLE    OF    CITED    CASKS 

ft ames  of  Cases,  Whore  Reported,  Pages  in  this  book. 

( iheney  Bros.  v.  Weinreb  &  Weinreb.  185  F.  It 217 

( !hesbire  v.  Multi-Mailer  Co 229  F.  It 63 

Chester  Forging,  etc.,  Co.  v.  Tindel- 

Morris  Co 165  F.  It 761 

Chicago  Fruit  House  Co.  v.  Busch.  .  .2  Bissell 463 

( JhicagO  Grain  Door  Co.  v.  Chicago, 

B.  &  Q.  It.  Co 137  F.  It 700 

Chicago  Pneumatic  Tool  Co.  v.  Phila- 
delphia Pneumatic  Tool  Co 118  F.  R 764 

Chicago  Wooden  Ware  Co.  t'.  Miller 

Ladder  Co 133  F.  R 734 

Child  v.  Adams 1  Fisher 143 

Child  v.  Iron  Works 19  F.  R 614,  637 

Chinnock  v.   Paterson,  P.  &  S.  Tel. 

Co 110  F.  R 643 

Chinnock  v.  Paterson,  P.  &  S.  Tel. 

Co 112  F.  R 684 

Chisholm  v.  Fleming 133  F.  R 96 

Chisholm  v.  Johnson 106  F.  R.  .  .485,  486,  490,  492,  512 

Christman  v.  Rumsey 17  Blatch 277 

Christensen  Engineering  Co.  v.  West- 

inghouse  Air  Brake  Co 135  F.  R 801 

Cimiotti  Unhairing  Co.  v.  American 

Fur  Refining  Co 198  U.  S 433,  441,  442,  446 

Cimiotti  Unhairing  Co.  v.  American 

Fur  Refining  Co 117  F.  R 745 

Cimiotti  Unhairing  Co.  v.  American 

Fur  Refining  Co 120  F.  R 647,  714 

Cimiotti  Unhairing  Co.  v.  American 

Unhairing  Mach.  Co 99  F.  R 725 

Cimiotti  Unhairing  Co.  v.  Frolloehr.  .  121  F.  R 797 

Cincinnati   Butchers'    Supply   Co.   v. 

Walker  Bin  Co 230  F.  R 709 

Cincinnati,  etc.,    Co.    v.    Am.    Hoist, 

etc.,  Co 143  F.  R 240 

Cincinnati  Ice  Machine  Co.  v.  Brew- 
ing Co 31  F.  R 424 

Cincinnati  Traction  Co.  v.  Pope 210  F.  R 15 

City  of  Akron  v.  Bone 221  F.  R 487 

City  of  Concord  v.  Norton 16  F.  R 542 

City  of  Grand  Rapids  v.  Warren  Bros. 

*  Co 196  F.  R 754,  757,  784 

City  of  Seattle  v.  McNamara 81  F.  R 623 


TABLE    OF   CITED    CASES  lxxi 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Clancy  v.  Troy  Belting  &  Supply  Co. .  157  F.  R 472 

Clark  Blade  &  Razor  Co.  v.  Gillette 

Safety  Razor  Co 194  F.  R 135,  177 

Clark  v.  Deere  &  Mansur  Co 80  F.  R 737 

Clark  v.  Wilson 30  F.  R 446 

Clark  v.  Wooster 119  U.  S 558,  615,  676,  677 

Clark    Thread    Co.     v.    Willimantic 

Linen  Co 140  U.  S 84,  88,  95 

Cleveland    Foundry    Co.    v.    Detroit 

Vapor  Stove  Co 131  F.  R 86,  165,  218 

Cleveland    Foundry    Co.    v.    Kauff- 

mann 135  F.  R 93 

Climax  Lock  &  Ventilator  Co.  v.  Ajax 

Hardware  Mfg.  Co 192  F.  R 547 

Clodfelter  v.  Cox 1  Sneed  (Tenn.) 338 

Clough  v.  Mfg.  Co 106  U.  S 440 

Clow  v.  Baker 36  F.  R 403,  714 

Cluett  v.  Claflin 140  U.  S 27 

Clum  v.  Brewer 2  Curtis.  .319,   354,   752,   761,   762, 

765 

Coburn  v.  Clark 15  F.  R 762 

Cochrane  v.  Badische  Anilin  &  Soda 

Fabrik Ill  U.  S 92,  224 

Cochrane  v.  Deener 94  U.  S.  .3,  84,  420,  431,  439,  440, 

467,  680 

Cochrane  v.  Waterman .' 1  McArthur's  Patent  Cases.  .  15,  46, 

175 

Coddington  v.  Propfe 112  F.  R 819 

Coes  v.  Collins  Co 9  F.  R 242 

Coffee  v.  Guerrant 68  O.  G 87 

Coffield  v.  Fletcher  Mfg.  Co 167  F.  R 297 

Coffield  Motor  Washer  Co.  v.  A.  D. 

Howe  Co 172  F.  R 308 

Coffin  v.  Ogden 18  Wallace 89,  90,  93 

Cohansey  Mfg.  Co.  v.  Wharton 28  F.  R 94 

Cohn  v.  Corset  Co 93  U.  S 74 

Cohn  v.  Rubber  Co 3  Bann.  &  Ard 370 

Coleman  v.  Grubb 23  Penn.  St 335 

Colgate  v.  Compagnie  Francaise 23  F.  R 562 

Colgate  v.  Gold  &  Stock  Telegraph 

Co 4  Bann.  &  Ard 771 

Colgate  v.  Gold    &    Stock    Telegraph 

Co 16  Blatch 772 


Ixxii  TABLE   OF   CITED    CASES 

Names  of  Casea,  Where  Reported.  Pages  in  this  book. 

( iolgate  v.  Mfg.  Co 28  F.  R 619,  620 

( Jolgate  r.  Ocean  Telegraph  Co 17  Blatch 201 

Colgate  r.  Telegraph  Co 19  F.  R 724 

( lollar  < '(».  v.  Van  Dusen 23  Wallace 292 

Collignon  v.  Hayes 8  F.  R 769,  770 

Collins  Chemical  Co.  v.  Capitol  City 

Mfg.  Co 42  F.  R 696 

Collins  v.  <  lleaaon 68  F.  R 54 

Collins  v.  Hathaway Olcott's  Reports 607 

Cohnan  v.  Am.  Warp  Drawing  Maeh. 

Co 235  F.  R 675 

Colt  V.  Arms  Co 1  Fisher 423 

Colt  v.  Young 2  Blatch 319,  772 

Colt's  Patent  Firearms  Mfg.   Co.  v. 

Wesson 127  F.  R 138 

Columbia  Motor  Car  Co.   v.   C.   A. 

Duerr  &  Co 184  F.  R Ill,  179,  220 

Columbia  Wire  Co.  v.  Freeman  Wire 

Co 71  F.  R 193,  467,  492,  776 

Columbia  Wire  Co.  v.  Kokomo  Steel 

&  Wire  Co 194  F.  R 821,  827 

Columbia  Wire  Co.  v.  Kokomo  Steel 

&  Wire  Co 143  F.  R.  .  .239,  431,  442,  450,  455 

Columbus    Chain    Co.    v.    Standard 

Chain  Co 148  F.  R 95 

Columbus  Watch  Co.  v.  Robbins 64  F.  R 242,  720 

Columbus  Watch  Co.  v.  Robbins 148  U.  S 740 

Commercial  Acetylene  Co.  v.  Avery 

Portable  Lighting  Co 152  F.  R 791 

Commercial  Acetylene  Co.  v.  Avery 

Portable  Lighting  Co .159  F.  R 791 

Commercial  Acetylene  Co.  v.  Avery 

Portable  Lighting  Co 166  F.  R 218 

Commercial       Acetylene       Co.       v. 

Schroeder " 203  F.  R 204 

Commercial  Acetylene  Co.  *;.  Search- 
light Gas  Co 188  F.  R .208 

Commercial  Acetylene  Co.  v.  Search- 
light Gas  Co 197  F.  R 204 

Commercial    Mfg.    Co.    v.    Fairbank 

Co 135  U.  S 208 

Commissioners  of  Hamilton  County 

v.  Mighels 7  Ohio  State 488 


TABLE    OF    CITED    CASES  LXXlii 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Commissioner  of  Patents  v.  Whiteley  .4  Wallace 153,  154,  306 

Commonwealth  v.  Petty 96  Ky 190 

Comptograph  Co.  v.  Burroughs  Add- 
ing Mach.  Co 175  F.  R 370 

Comptograph  Co.  v.  Mechanical  Ac- 
countant Co 145  F.  R 55,  437 

Computing  Scale   Co.   v.   Automatic 

Scale  Co 204  U.  S 56,  441,    113 

Computing    Scale    Co.    v.    Keystone 

Store-Service  Co 88  F.  R 236 

Computing    Scale    Co.    v.    Standard 

Computing  Scale  Co 195  F.  R 173 

Comstock  v.  Sandusky  Seat  Co 3  Bann.  &  Ard 119,   127 

Cone  v.  Morgan  Envelope  Co 4  Bann.  &  Ard 49 

Conderman  v.  Clements 147  F.  R 684 

Conley  v.  King  Bridge  Co 175  F.  R 52 

Connors  v.  Ormsby 148  F.  R 593 

Conover  v.  Mevs 3  Fisher 772 

Conover  v.  Mevs 11  Blatch 823 

Conover  v.  Rapp 4  Fisher 563,  564 

Conover  v.  Roach 4  Fisher 99,  437,  564 

Conroy  v.   Penn.   Electrical  &   Mfg. 

Co 155  F.  R 4 

Conroy  v.   Penn.   Electrical  &   Mfg. 

Co .173  F.  R 4,  286 

Conroy  v.   Penn.   Electrical   &   Mfg. 

Co 199  F.  R 808 

Consolidated  Apparatus  Co.  v.  Brew- 
ing Co  ! 28  F.  R 752 

Consolidated      Apparatus      Co.      v. 

Woerle 29  F.  R 579 

Consolidated     Brake-Shoe     Co.     v. 

Chicago,  P.  &  St.  L.  Ry.  Co.  .  .  .69  F.  R 501 

Consolidated  Brake-Shoe  Co.  v.  De- 
troit Spring  Co 47  F.  R 519 

Consolidated  Brake-Shoe  Co.  v.  De- 
troit S.  &  S.  Co 59  F.  R 165 

Consolidated  Bunging  Apparatus  Co. 

v.  Brewing  Co 60  F.  R 53 

Consolidated  Cable  Co.  v.  Pacific  Ry. 

Co 58  F.  R 720 

Consolidated    Car    Heating    Co.     v. 

American  Electric  Heating  Corp .  82  F.  R 54,  226,  497 


I.WIV  TABLE    OF    CITED    CASKS 

Names  of  Cases.  Where  Reported.  Pages  in  thia  book. 

Consolidated  Contract  Co.  v.  Hassam 

Paving  Co 227  F.  It 79,  488,  557 

Consolidated    Electric   Light   Co.    v. 

Edison  Electric  Lighl  Co 25  F.  It 209,  323 

Consolidated   Electric  Light    Co.   v. 

Electric  Light  Co 20  F.  It 511 

Consolidated    Electric    Light    Co.    v. 

McKeesport  Light  Co 34  F.  R 209 

Consolidated    Electric    Light    Co.    v. 

McKeesport  Light  Co 40  F.  It 535 

Consolidated    Electric    Light    Co.    v. 

McKeesport  Light  Co 159  U.  S 226,  243,  459 

Consolidated  Electric  Storage  Co.  v. 

Accumulator  Co 55  F.  R 783 

Consolidated  Engine  Co.  v.  Landers, 

Frary  &  Clark 159  F.  R 433 

Consolidated  Fastener  Co.  v.  Ameri- 
can Fastener  Co 94  F.  R 755 

Consolidated  Fastener  Co.  v.  Colum- 
bian Fastener  Co 79  F.  R 258 

Consolidated  Fastener  Co.  v.  Hays.  .  100  F.  R 784 

Consolidated    Fastener    Co.    v.    Lit- 

tauer 84  F.  R 784 

Consolidated  Fastener  Co.  v.  Top- 
pen 113  F.  R 779 

Consolidated  Fruit  Jar  Co.  v.  Stamp- 
ing Co 27  F.  R 106,   111 

Consolidated  Fruit  Jar  Co.  v.  Whit- 
ney  1  Bann.  &  Ard 375,  775,  776 

Consolidated  Fruit  Jar  Co.  v.  Whit- 
ney  2  Bann.  &  Ard 346,  364,  545 

Consolidated  Fruit  Jar  Co.  v.  Wright. .  94  U.  S .  .  106,  108,  112,  114,  117,  185 

Consolidated  Middlings  Purifier  Co. 

v.  Guilder 9  F.  R 546 

Consolidated  Oil  Well  Packer  Co.  v. 

Eaton 12  F.  R 481 

Consolidated  Purifier  Co.  v.  Wolf.  . .  .28  F.  R 369,  372 

Consolidated    Railway,    etc.,    Co.    v. 

Adams  &  Westlake  Co 161  F.  R 96,  557,  576 

Consolidated      Roller-Mill      Co.      v. 

Barnard  &  Leas  Mfg.  Co 43  F.  R 707 

Consolidated      Roller-Mill      Co.      v. 

Coombs 39  F.  R 82,  248,  432 


TABLE    OE    CITED    CASES  lxXV 

Names  of  Cases.  Where  Reported.  Pages  in  this  hook. 

Consolidated      Roller-Mill      Co.      v. 

Richmond  Mill  Works 40  F.  R 774 

Consolidated      Roller-Mill      Co.      v. 

Walker 43  F.  R 206 

Consolidated       Roller-Mill       Co.    v. 

Walker 138  U.  S 27,  236,  241 

Consolidated    Rubber    Tire    Co.    v. 

Diamond  Rubber  Co 226  F.  R 020,  02!) 

Consolidated    Rubber    Tire    Co.     v. 

Diamond  Rubber  Co 162  F.  R 709 

Consolidated    Rubber    Tire    Co.     v. 

Diamond  Rubber  Co 232  F.  R 017,  025,  031 

Consolidated  Rubber  Co.  v.  Firestone 

T.  &  R.  Co 151  F.  R 50 

Consolidated  Rubber  Tire  Co.  v.  Fin- 
ley  Rubber  Tire  Co 110  F.  R 372,  547 

Consolidated  Rubber  Tire  Co.  v.  Fin- 
ley  Rubber  Tire  Co 119  F.  R 498 

Consolidated    Seeded    Raisin    Co.    v. 

Selma  Fruit  Co 195  F.  R 4,  230 

Consolidated    Store    Service    Co.    v. 

Siegel-Cooper  Co 107  F.  R 45 

Consolidated  Valve  Co.  v.  Valve  Co. .  113  U.  S 217 

Consumers'  Gas  Co.  v.  Electric  Co. .  .  50  F.  R 308 

Continental  Automobile  Co.  v.  A.  S. 

Spaulding  &  Bro 177  F.  R 242 

Continental  Gin  Co.  v.  F.  H.  Lummus 

Sons'  Co 110  F.  R 511 

Continental  Paper  Bag  Co.  v.  East- 
ern Paper  Bag  Co 210  U.  S.  .  138,  185,  214,  221,  249 

253,  443,  741,  788 

Continental  Rubber  Works  v.  Single 

Tube  Automobile,  etc.,  Co 178  F.  R 110 

Continental     Store    Service     Co.     v. 

Clark 100  N.  Y 409 

Continental  Windmill  Co.  v.  Empire 

Windmill  Co 8  Blatch 339,  340,  343,  305 

Continental  Wire  Fence  Co.  v.  Pender- 

gast 120  F.  R 547 

Cook  v.  Bidwell 8  F.  R 344 

Cook  v.  Sterling  Electric  Co 118  F.  R 320,  345,  050 

Cook  v.  Sterling  Electric  Co 150  F.  R 304 

Coon;;.  Wilson 113  U.  S 287,  292,  295 


Ixxvi  TABLE    OF   CITED    CASES 

Names  of  Coses.  Where  Reported.  Pages  in  this  book. 

Coop  v.  Physical  Institute 47  F.  It 518,  645 

Co-operating  Merchants'  Co.  v.  Hal- 
lock 128  F.  It 785 

( '(><>[)(>r  v.  Mattheys 3  Penn.  Law  Journal  Rep.  .748,  765 

Corbin   Cabinet  Lock   Co.   v.   Eagle 

Lock  Co 150  U.  S 30,  256,  300 

Corbin  Lock  Co.  v.  Eagle  Lock  Co. .  .  37  F.  R 232 

Corbin  Lock  Co.  v.  Yale  &  Towne 

Mfg.  Co 58  F.  R 547,  757 

Comely  v.  Marckwald 32  F.  R 619 

Comely  v.  Marckwald 131  U.  S 618,  622,  623 

Corning  v.  Burden 15  Howard 4,  221,  260,  589 

Corning  v.  Tory  Iron  &   Nail  Fac- 
tory   15  Howard 736 

Corn-Planter  Patent 23  Wallace.  .27,  74,  75,  91,  236,  289, 

302,  439 
Corrington  v.  Westinghouse  Air  Brake 

Co 178  F.  R 88,  177 

Corrugated  Metal  Co.  v.  Pattison 197  F.  R 531,  532 

Corser  v.  Overall  Co 59  F.  R 751 

Cortelyouv.  Lowe Ill  F.  R 362 

Cote  v.  Moffitt 15  F.  R 304,  595 

Cotter  v.  Copper  Co 13  F.  R 421 

Cottier  i\  Stimson 18  F.  R 516 

Cottle  v.  Krementz 31  F.  R 92 

Cotto-Waxo   Co.    v.    Perolin   Co.   of 

America 185  F.  R 255,  256 

Coulston  v.  H.  Franke  Steel  Range  Co.221  F.  R 662,  664 

Coupe  v.  Royer 155  U.  S 98,  259,  594,  613,  804 

Coupe  v.  Weatherhead 37  F.  R 721 

Courson  v.  O'Connor 227  F.  R 109 

Cover  v.  American  Thermo-Ware  Co .  188  F.  R 31 

Covert  v.  Covert 106  F.  R 118 

Covert  v.  Curtis 25  F.  R 754 

Covert  v.  Sargent 38  F.  R 381,  615,  623,  806 

Covert  v.  Sargent 42  F.  R 637 

Covert  v.  Travers  Bros.  Co 70  F.  R 683 

Covert  v.  Travers  Bros.  Co 96  F.  R 681 

Cowing  v.  Rumsey 8  Blatch 596,  613 

Cox  v.  Griggs 1  Bissell 564 

Craig  v.  Michigan  Lubricator  Co.  .  .  .72  F.  R 118 

Cramer  v.  Fry 68  F.  R 488,  595 

Cramer  v.  Singer  Mfg.  Co 93  F.  R 543 


TABLE    OF    CITED    CASES  lxxvii 

Names  of  Cases.  Where  Reported.  Pages  in  thi*  book. 

Crandall  v.  Piano  Mfg.  Co 24  F.  R 372 

Cranson  v.  Smith 37  Mich 190 

Crary  v.  Smith 2  Comstock  (N.  Y.) 777 

Craver  v.  Weyhrich 31  F.  R 108,  109 

Crawford  v.  Heysinger 123  U.  S 240,  254 

Creamer  v.  Bowers 30  F.  R 077 

Creamer  v.  Bowers 35  F.  R 622,  624,  632,  803 

Crescent  Brewing  Co.  v.  Gottfried ...  127  U.  S 239 

Crescent  Brewing  Co.  v.  Gottfried ...  128  U.  S 51,  246 

Crescent   Specialty    Co.    v.    National 

Fireworks  Distributing  Co 219  F.  R 751,  754,  784 

Crier  v.  Innes 170  F.  R 16,  642,  710,  788 

Crittenden  v.  White 23  Minn 190 

Crompton  v.  Belknap  Mills 3  Fisher 141,  316 

Crompton  v.  Knowles 7  F.  R 59 

Crompton  &  Knowles  Loom  Works  v. 

Stafford  Co 205  F.  R 142 

Crosby   Valve   Co.    v.   Safety   Valve 

Co 141  U.  S 622,  804,  806,  828 

Croskey  v.  Atterbury 9  App.  D.  C 171 

Croskey  v.  Atterbury 76  O.  G 169 

Cross  v.  Evans 167  U.  S 608,  740 

Cross  v.  Mackinnon 11  F.  R 439 

Cross   Paper   Feeder   Co.   v.   United 

Printing  Mach.  Co 220  F.  R 549 

Crouch  v.  Roemer 103  U.  S 46 

Crowe  v.  Oscar  Barnett  Foundry  Co .  .  206  F.  R 448 

Crowell  v.  Parmeter 3  Bann.  &  Ard 769 

Crown  Cork  &  Seal  Co.  v.  Alumi- 
num Stopper  Co 108  F.  R .  .  99,  103, 106,  125,  127,  189, 

296,  463,  577,  737 
Crown  Cork  &  Seal  Co.  v.  Am.  Cork 

Specialty  Co 211  F.  R 798 

Crown  Cork  &  Seal  Co.  v.  Brooklyn 

Bottle  Stopper  Co 200  F.  R 396 

Crown  Cork  &  Seal  Co.  v.  Brooklyn 

Bottle  Stopper  Co 190  F.  R 502 

Crown   Cork   &   Seal  Co.   v.   Carper 

Automatic  Bottling  Machine  Co.229  F.  R 549 

Crown    Cork    &    Seal    Co.    v.    Ideal 

Stopper  Co 123  F.  R 80 

Crown  Cork  &  Seal  Co.  v.  Imperial 

Bottle  Cap  Co 123  F.  R 439 


lxXVlii  TABLE    OF    CITED    CASES 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Crown  Cork  &  Seal  Co.  V.  Standard 

Stopper  (Jo 130  F.  li 86 

Crown  Cork  <fc   Seal  (  o.  v.  Sterling 

Cork  &  Seal  Co 217  F.  R 248 

Crozier  v.  Krupp 224  U.  S 195,  196,  479 

Cumming  v.  Baker  &  Hamilton 144  F.  R 442 

Cummings  v.  Plaster  Co 6  Blatch 605 

Curran  v.  Arkansas 15  Howard 504,  510 

Curran  v.  Burdsall 20  F.  R 379 

Curran  v.  Car  Co 32  F.  R 497 

Curry  v.  Union  Electric  Welding  Co. .  .  230  F.  R 241,  437,  453 

Curtain  Supply  Co.  v.  National  Lock 

Washer  Co 174  F.  R 108 

Curtis  v.  Atlanta  Street  Railway  Co. .  .  56  F.  R 95 

Curtis  v.  Overman  Wheel  Co 58  F.  R 784 

Cushman   Paper  Box   Mach.   Co.   v. 

Goddard 95  F.  R 711 

Cutler  v.  Maryland  Hotel  Co 168  F.  R 478 

Cutler-Hammer  Co.  v.  Hammer 124  F.  R 708 

Cutler-Hammer  Co.  v.  Union  Electric 

Mfg.  Co 147  F.  R 165,  450 

Cutler-Hammer  Co.  v.  Hammer 147  F.  R 165 

Cutter  Co.  v.  Sheldon 10  Blatch 340 

Cutting  v.  Myers 4  Washington 519,  520 

C.  W.  Siemens'  Appeal 11  O.  G 299 


Dable  Grain  Shovel  Co.  v.  Flint 137  U.  S 182 

Dade  v.  Boorum  &  Pease  Co 121  F.  R 690 

Daimler  Mfg.  Co.  v.  Conklin 170  F.  R 348 

Dale  v.  Rosevelt 1  Paige  (N.  Y.) .  .  . 546,  714 

Dale  Tile  Mfg.  Co.  v.  Hyatt 125  U.  S 469 

Dalton  v.  Nelson 13  Blatch 32 

Dalzell  v.  Dueber  Mfg.  Co 149  U.  S 324,  326,  344,  657 

Dancel  v.  United  Shoe  Mach.  Co 120  F.  R 651 

Daniel  v.  Miller 81  F.  R 547 

D'Arcy  v.  Staples  &  Hanford  Co 161  F.  R 545 

Dare  v.  Boylston 6  F.  R 370 

Dashiell  v.  Grosvenor 162  U.  S 447 

Davey  Pegging  Mach.  Co.  v.  Prouty .  .  107  F.  R 424 

David  E.   Kennedy,   Inc.,  v.   Beaver 

Tile  &  Specialty  Co 232  F.  R 4 


TABLE    OF    CITED    CASES  lxxix 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Davidson  v.  Lewis 1  Mc Arthur's  Patent  Cases.  ...  88 

Davis  v.  Fredericks 19  F.  R 29 

Davis  v.  Garrett 152  F.  R 159 

Davis  v.   Hall  Mammoth   Incubator 

Co 200  F.  R 379 

Davis  v.  Murphy 2  Rich.  (S.  C.) 545 

Davis  v.  Palmer 2  Brock 58 

Davis  v.  Smith 19  F.  R 677 

Davis  v.  United  States 23  Court  of  Claims 478 

Davis    Electrical    Works    v.    Edison 

Electric  Light  Co 60  F.  R 364 

Davis  Sewing  Machine  Co.   v.   New 

Departure  Mfg.  Co 217  F.  R 138 

Davis  Wheel  Co.  v.  Davis  Wagon  Co .  20  F.  R 340 

Davis  &  Roesch,  etc.,  Co.  v.  National 

Steam,  etc.,  Co 164  F.  R 173 

Davis  &   Roesch,   etc.,    Co.   v.   Tag- 

liabue 148  F.  R 332 

Davis  &   Roesch,  etc.,   Co.   v.   Tag- 

liabue 150  F.  R 337 

Davison's  Ex'rs  v.  Johnson 16  New  Jersey  Equity 656 

Davock  v.  Chicago  &  Northwestern 

R.  R.  Co 69  F.  R 684 

Dawes  v.  Taylor . 14  Reporter 679 

Day  v.  Car-Spring  Co 3  Blatch 530,  748 

Day  v.  Hartshorn 3  Fisher 766,  767 

Day  v.  Railroad  Co 132  U.  S 27 

Day  v.  Rubber  Co 20  Howard 596 

Day  v.  Stellman 1  Fisher 596 

Day  «.  Woodworth 13  Howard 602,  627,  631 

Dayton  Crupper  Co.  v.  Ruhl 55  F.  R 685 

Dayton  Fan  &  Motor  Co.  v.  West- 

inghouse  Electric  &  Mfg.  Co.  ...  118  F.  R 234 

Dean  v.  Mason 20  Howard 735,  804 

Deane  v.  Hodge 35  Minn 366,  377 

De  Beaumont  v.  Williames 71  F.  R 327 

Dececo  Co.  v.  Gilchrist  Co 125  F.  R 45,  55,  80 

Decker  v.  Smith 225  F.  R 817 

Dedekam  v.  Vose 3  Blatch ■ 603,  607 

Dederick  v.  Fox 56  F.  R 233,  398,  679 

Dederick  o.  Seigmund 51  F.  R 243,  441,  447 

Dederick    v.    Whitman    Agricultural 

Co 26  F.  R 560 


lxxx  TABLE    OF   CITED    CASES 

Names  of  Cases.                                                   Where  Reported.              Pages  in  this  book. 
Deere  &   Co.    v.    Rock    Island    Plow- 
Co 84  F.  R 50 

Deering  v.  Harvester  Works 155  U.  S 87,  94,  105 

Deering  v.  Winona  Harvester  Works .  155  U.  S 13G,  221 

De  Florcz  v.  Raynolds 14  Blatch 141 

De  Florez  v.  Raynolds 17  Blatch 584,  694 

DeForest    v.    Collins   Wireless    Tele- 
phone Co 174  F.  R 357,  484 

De  Lamar  v.  Deeley 53  F.  R 118 

De  Lamar  v.  De  Lamar  Mining  Co.  .  110  F.  R 51 

De  Lamar  v.  De  Lamar  Mining  Co .  .  117  F.  R 35 

Delamater  v.  Reinhardt 43  F.  R 562 

Delano  v.  Scott Gilpin 489 

DeLaski  &  Thropp,  etc.,  Co.  v.  Fisk 

Rubber  Co 203  F.  R 96 

DeLaski  &  Thropp,  etc.,  Co.  v.  Wm. 

R.  Thropp  &  Sons  Co 218  F.  R 62,  65 

DeLaval  Separator  Co.  v.  Iowa  Dairy 

Separator  Co 194  F.  R 96,  720 

De  Laval  Separator  Co.  v.  Vermont 

Farm-Mach.  Co 109  F.  R 559 

De  Laval  Separator  Co.  v.  Vermont 

Farm-Mach.  Co 135  F.  R 549 

De  La  Vergne  Machine  Co.  v.  Feath- 

erstone 49  F.  R 542 

De  La  Vergne  Mach.  Co.  v.  Feath- 

erstone 147  U.  S 210,  352 

Delaware  Coal  &  Ice  Co.  v.  Packard.  .5  Bann.  &  Ard 232,  235 

Delaware  Seamless  Tube  Co.  v.  Shelly 

Steel  Tube  Co 160  F.  R 328 

Delaware    Telephone    Co.    v.    Dela- 
ware  50  F.  R 192 

Delemater  v.  Heath 58  F.  R 114 

De  Loriea  v.  Whitney 63  F.  R 595 

De  Mayo  Coaling  Co.  v.  Michener 

Stowage  Co 231  F.  R 57 

Denning  Wire  &  Fence  Co.  v.  Am. 

Steel  &  Wire  Co 169  F.  R 4,  259 

Dennis  v.  Eddy ' 12  Blatch 605 

Densmore  v.  Tanite  Co 32  F.  R 369 

Dental  Vulcanite  Co.  v.  Davis 102  U.  S 436 

Dental   Vulcanite   Co.    v:  Van   Ant- 
werp   2  Bann.  &  Ard 614 


TABLE    OF   CITED    CASES  lxxxi 

Names  of  Cases.  Where  Reported.  P:ir^  in  this  book. 

Dental  Vulcanite  Co.  v.  Wetherbee.  .2  Cliff 297 

Denton  v.  Commissioner  of  Patents.  .83  O.  G 290 

Derby  v.  Thompson 146  U.  S 92,  234,    133 

Despeaux    v.    Pennsylvania    Railroad 

Co 81  F.  R 592 

Detroit  Copper  Mining  Co.  v.  Mine  & 

Smelter  Supply  Co 215  F.  R 154 

Detroit  Lubricator  Mfg.  Co.  v.  Ren- 
chard  9  F.  R 75 

Detweiler  v.  Voege 8  F.  R 361 

Detwiller  v.  Bosler 58  F.  R 721 

De  Ver  Warner  v.  Bassett 7  F.  R 758 

Devlin  v.  Paynter 64  F.  R 432 

De  Witt  v.  Mfg.  Co 5  Hun  (N.  Y.) 354 

Dexter  v .  Arnold 5  Mason 722,  730,  7o  1 

Dexter  v.  Arnold 2  Sumner 840 

Dey  v.  Stellman 1  Fisher 366 

Diamond  Drill  &Mach.  Co.  t\  Kelley.  132  F.  R 502 

Diamond  Drill  &  Mach.  Co.  v.  Kelly 

Bros 120  F.  R 55,  69,  94,  237,  425 

Diamond  Match  Co.  v.  Ohio  Match 

Co 80  F.  R 511,  518,  644 

Diamond    Match    Co.    v.    Oshkosh 

Match  Works 63  F.  R 712 

Diamond  Match  Co.  v.  Ruby  Match 

Co 127  F.  R 258,  454 

Diamond  Match  Co.  v.  Union  Match 

Co 129  F.  R 751 

Diamond  Patent  Co.  v.  S.  E.  Carr  Co  .217  F.  R 90,  238 

Diamond  Rubber  Co.  v.  Consolidated 

Tire  Co 220  U.  S 50,  56,  57,  218,  443 

Diamond  State  Iron  Co.  v.  Goldie.  .  .84  F.  R 58 

Diamond  Stone-Sawing  Machine  Co. 

v.  Sens 159  F.  R 677 

Diamond      Stone-Sawing      Co.       v. 

Brown 155  F.  R 617,  631 

Diamond      Stone-Sawing       Co.       v. 

Brown 166  F.  R 618,  619 

Dibble  v.  Augur 7  Blatch 481 

Dick  v.  Struthers 25  F.  R 484,  676 

Dick  v.  Supply  Co 25  F.  R 683 

Dickerson  v.  Colgrove 100  U.  S 542 

Dickerson  v.  Machine  Co 35  F.  R 751,  752 


1XXX11  TABLE    OF    CITED    CASES 

Names  of  Cases.  When;  Reported.  Pages  in  this  book. 

Dickerson  v.  Matheson 57  F.  R 349 

Dickerson  r.  Tinling 84  F.  R 349 

Dicks  Press-Guard  Co.  v.  Bowen ....  229  F.  R 498 

Dittgen  v.  Racine  Paper  Goods  (Jo. .  .  164  F.  R.  (p.  84) 049 

Dittgen     v.     Racine      Paper    Goods 

Co 181  F.  R.  (p.  85) 402,  649 

Dittmar  v.  Rix 1  F.  R 421 

Dixie  Cotton  Picker  Co.  v.  Bullock .  .  188  F.  R 371 

Dixon-Woods  Co.  v.  Pfeifer 55  F.  R 217 

Dobson  v.  Carpet  Co 114  U.  S 813 

Dobson  v.  Cubley 149  U.  S 234,  433 

Dobson  v.  Dornan 118  U.  S 131,  139,  623,  813 

Dobson  v.  Graham 49  F.  R 712 

Dobson  v.  Hartford  Carpet  Co 114  U.  S 139 

Dobson  v.  Lees 137  U.  S 290,  292,  582 

Dodge  v.  Card 2  Fisher 761 

Dodge  v.  Fowler 11  App.  D.  C 172 

Dodge  v.  Post 76  F.  R 94 

Doelger   v.    German-American    Filter 

Co 204  F.  R 709 

Dominick  &  Haff  v.   R.   Wallace  & 

Sons  Mfg.  Co 209  F.  R 463 

Donaldson  v.  Roksament  Co 176  F.  R 501,  797 

Donnell  v.  Insurance  Co 2  Sumner 840 

Dorlon  v.  Guie 25  F.  R 83 

Dorman  v.  Keefer 49  F.  R 167 

Dorsey  Rake  Co.  v.  Marsh 6  Fisher 773,  774,  788 

Dorsey  Rake  Co.  v.  Mfg.  Co 12  Blatch 357,  362 

Doubleday  v.  Sherman 4  Fisher 801 

Doughty  /;.  West 6  Blatch 406 

Doughty  v.  West 2  Fisher 686,  752,  755 

Douglas  v.  Abraham 50  F.  R 256 

Dover  v.  Greenwood 143  F.  R 157 

Dover  v.  Greenwood 154  F.  R 159 

Dover  v.  Greenwood 177  F.  R 159 

Dow  v.  Harkin 67  N.  H 326 

Dowagiac  Mfg.  Co.  i>.  Brennan 118  F.  R 447,  587 

Dowagiac    Mfg.    Co.    v.    Brennan  & 

Co 127  F.  R 442,  454,  710 

Dowagiac    Mfg.    Co.    v.    Minnesota 

Moline  Plow  Co 118  F.  R 29 

Dowagiac    Mfg.    Co.    r.    Minnesota 

Plough  Co 235  U.  S 615,  626,  817 


TABLE    OF    CITED    CASES  lxxxiii 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Dowagiac  Mfg.  Co.  v.  Superior  Drill 

Co 115  F.  R 231,  239,  454 

Dowagiac  Mfg.  Co.  V.  Superior  Drill 

Co 162  F.  R 809 

DoweU  v.  Mitchell 105  U.  S 676 

Dowries  v.  Teter-Heany  Development 

Co 150  F.  R 223 

Downton  v.  Allis 9  F.  R 328,  33S 

Downton  v.  Mfg.  Co 9  F.  R 328 

Downton  v.  Milling  Co 108  U.  S 72 

Doyle  v.  Spalding 19  F.  R 69 

Drainage  Construction  Co.  v.  Chel- 
sea  41  F.  It 377 

Drainage  Construction  Co.  v.  Engle- 

wood  Sewer  Co 67  F.  R 684 

Drake  v.  Hall 220  F.  R 353 

Drake  Castle  Pressed  Steel  Lug  Co. 

v.  Brownell 123  F.  R 31,  684 

Draper  v.  Am.  Loom  Co 161  F.  R 789 

Draper  v.  Am.  Loom  Co 169  F.  R 740 

Draper  v.  Hudson 1  Holmes 787 

Draper  v.  Potomska  Mills 3  Bann.  &  Ard 75 

Draper  v.  Wattles 3  Bann.  &  Ard 119,  147 

Drawbaugh  v.  Seymour 77  O.  G 151 

Dredging  Co.  v.  Miller 20  App.  D.  C 355 

Dreskill  v.  Parish 5  McLean 605 

Drewsen  v.  Hartje  Paper  Co 131  F.  R 148,  572 

Drevfus  v.  Schneider 25  F.  R 93 

Dreyfus  v.  Searle 124  U.  S 51,  438 

Drum  v.  Turner 219  F.  R 96,  256 

Dryfoos  v.  Friedman 18  F.  R 461 

Dryfoos  v.  Wiese 124  U.  S 438 

Du  Bois  v.  Kirk 158  U.  S 28,  733,  738,  786 

Duboise  v.  Railroad  Co 5  Fisher 543,  544 

Dudley  E.  Jones  Co.  v.  Munger  Mfg. 

Co 49  F.  R 138 

Dudley  E.  Jones  Co.  v.  Munger  Mfg. 

Co 50  F.  R 717 

Dueber  Watch  Case  Co.  v.  Dalzell.  .38  F.  R 340 

Duer  v.  Lock  Co 149  U.  S 27,  55,  59 

Duff  v.  Pump  Co 107  U.  S 447 

Duffy  v.  Reynolds 24  F.  R 93 

Dukes  r.  Bauerle '. 41  F.  R 22,  139 


1XXX1V  TABLE    OF    CITED    CASES 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Dull    v.    Reynolds    Electric    Flasher 

Mfg.  Co 161  F.  R 378 

Dunbar  v.  Eastern  Elevat  ing  Co 75  F.  R 289 

Dunbar  v.  Eastern  Elevating  Co ....  81  F.  R 53 

Dunbar  v.  Myers 94  U.  S.  .42,  234,  275,  433,  542,  684 

Duncan  o.  Cincinnati  Butchers'  Supply 

Co 171  F.  R 235,  463 

Duncan  v.  Stockholm 204  F.  R 136 

Dunham  v.  Bent 72  F.  R 372 

Dunham  v.  Dennison  Mfg.  Co 154  U.  S 295 

Dunham  v.  Railroad  Co 7  Bissell 354,  365 

Dunlap  v.  Schofield 152  U.  S 522,  541,  561,  694 

Dunn  Mfg.  Co.  v.  Standard  Comput- 
ing Scale  Co 163  F.  R 45 

Duntley  Mfg.  Co.  v.  Keller  Mfg.  Co.  163  F.  R 685 

Duplex  Printing-Press  Co.  v.  Camp- 
bell Printing-Press  Co 69  F.  R 774,  783 

Duponti  v.  Mussy 4  Washington 651 

Durand  v.  Schulze 61  F.  R 223 

Durham  v.  Seymour 71  O.  G 158,  159 

Durham  v.  Seymour 161  U.  S 176 

Dyer  v.  Cryden 153  F.  R 520 

Dyer  v.  Rich - 1  Metcalf  (Mass.) 329,  341 

Dyson  v.  Danforth 4  Fisher 579 

E 

Eachus  v.  Broomah* 115  U.  S 302,  542 

Eager  v.  United  States 35  Court  of  Claims 60 

Eagle  Lock  Co.  v.  Corbin  Lock  Co.  .64  F.  R 721 

Eagle  Mfg.  Co.  v.  Bradley  Mfg.  Co.  .50  F.  R 545 

Eagle  Mfg.  Co.  v.  Miller 41  F.  R 497,  545 

Eagle  Mfg.  Co.  v.  Plow  Co 36  F.  R 774 

Eagle  Pencil  Co.  v.  American  Pencil 

Co 53  F.  R 22 

Eagleton  Mfg.  Co.  v.  West  Mfg.  Co.  Ill  U.  S 164 

Eames  v.  Andrews 122  U.  S 3,  72 

Eames  v.  Cook 2  Fisher 425 

Eames  v.  Godfrey 1  Wallace 234,  433,  437 

Earl  v.  Rochester  S.  &  E.  R.  Co 157  F.  R 759 

Earle  v.  Hall 22  Pickering  (Mass.) 552 

Eastern   Dynamite  Co.   v.   Keystone 

Powder  Works 164  F.  R 561 


TABLE    OF    CITED    CASES  IxXXV 

Names  of  Cases.  Where  Reported.  Papp<>  in  this  book. 

Eastern  Paper  Bag  Co.  v.  Nixon .  .  .  .35  F.  R 707,  773 

Eastman  v.  Bodfish 1  Story 522 

Eastman  v.  Hinckel 5  Bann.  &  Ard 461 

Eastman  v.  Houston 95  O.  G 168 

Eastman  v.  Mayor  of  City  of  New 

York 134  F.  R 113,  117 

Eastman  Co.  v.  Getz 84  F.  R 606 

Eastwood    v.    Cutler-Hammer    Mfg. 

Co 148  F.  R 643,  644 

Eaton  v.  Lewis 115  F.  R 19 

Eby  v.  King : 158  U.  S 292,  297 

Ecaubert  v.  Appleton , 47  F.  R 689 

Ecaubert  v.  Appleton 67  F.  R 95,  105,  607,  700 

Eck  v.  Kutz 132  F.  R 69,  108,  173,  463 

Eclipse  Mfg.  Co.  v.  Adkins 36  F.  R 684 

Eclipse  Mfg.  Co.  v.  Adkins 44  F.  R 22 

Eclipse  Windmill  Co.  v.  Windmill  Co .  24  F.  R 374 

Edison  v.  Allis-Chalmers  Co 191  F.  R 475,  492 

Edison  r.  American  Mutoscope  Co.  .  110  F.  R 113,  178,  789 

Edison  v.  American  Mutoscope  Co. .  114  F.  R 30,  227,  236 

Edison  Electric  Light  Co.  v.  Beacon 

Electrical  Co 54  F.  R 751,  766 

Edison  Electric  Light  Co.  v.  Bloom- 

ingdale 65  F.  R 707 

Edison  Electric  Light  Co.  v.  Boston 

Lamp  Co 62  F.  R 441 

Edison  Electric  Light  Co.  v.  Buck- 
eye Electric  Co 59  F.  R 214,  779 

Edison  Electric  Light  Co.  v.   E.   G. 

Bernard  Co 88  F.  R 53 

Edison  Electric  Light  Co.  v.  Electric 

Mfg.  Co 57  F.  R.  .    766 

Edison  Electric  Light  Co.  v.  Electric 

Supply  Co 60  F.  R 584 

Edison  Electric  Light  Co.  v.  Electric 

Supply  Co 66  F.  R 739 

Edison  Electric  Light  Co.  v.  Equi- 
table Life  Co 55  F.  R 657,  680,  682 

Edison  Electric  Light  Co.  v.  Goelet.  .65  F.  R 362 

Edison    Electric    Light    Co.    v.    Mt. 

Morris  Electric  Light  Co 57  F.  R 681 

Edison  Electric    Light    Co.    v.    Mt, 

Morris  Electric  Light  Co 58  F.  R 771,  774 


lxXXvi  TABLE    OF    CITED    CASES 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Edison    Electric    Light.    Co.    ».    New 

Haven  Electric  Co 35  F.  R 344 

Edison  Electric  Light  Co.  /'.  Novelty 

Incandescent  Lamp  Co 167  F.  K 88 

Edison  Electric  Light  Co.  v.  Penin- 
sular Light,  Power  &  Heat  Co.  .95  F.  B 359,  494 

Edison  Electric  Light  Co.  v.  Penin- 
sular L.,  P.  &  H.  Co 101  F.  K 360 

Edison  Electric  Light  Co.  v.  Perkins 

Electric  Lamp  Co 42  F.  P 206 

Edison  Electric  Light  Co.  v.  Phila- 
delphia Trust  Co 60  F.  R 422,  753 

Edison  Electric  Light  Co.  v.  Sawyer- 
Man  Electric  Co 53  F.  R 771,  774 

Edison  Electric  Light  Co.  v.   United 

States  Electric  Lighting  Co 35  F.  R 205 

Edison  Electric  Light  Co.  v.  United 

States  Electric  Lighting  Co 45  F.  R 715 

Edison  Electric  Light  Co.   v.   U.   S. 

Electric  Lighting  Co 47  F.  R 254 

Edison  Electric  Light  Co.   v.   U.   S. 

Electric  Lighting  Co 52  F.  R.  .32,  36,  214,  216,  237,  238 

Edison  Electric  Light  Co.  v.  Waring 

Electric  Co 59  F.  R 205 

Edison  Electric  Light  Co.   v.   West- 

inghouse  Electric  Co 54  F.  R 799 

Edison  Phonograph  Co.  v.  Haw- 
thorne &  Sheble  Mfg.  Co 108  F.  R 641 

Edison    Phonograph    Co.    v.    Kauf- 

mann 105  F.  R 362 

Edison  Phonograph  Co.  v.  Pike 116  F.  R 362 

Edison    Phonograph    Co.    v.    Victor 

Talking  Mach.  Co 120  F.  R 511 

Edward  Barr  Co.  v.  Sprinkler  Co.  .  .  .32  F.  R 751,  760 

E.  E.  Johnson  Co.  v.  Grinnell  Wash- 
ing Machine  Co 231  F.  R 39 

Egbert  v.  Lippmann 104  U.  S 114 

E.  H.  Freeman  Electric  Co.  v.  Johns- 
Pratt  Co 204  F.  R 50 

Eibel  Process  Co.  v.  Remington- 
Martin  Co 197  F.  R 712 

E.  J.  Manville  Mach.  Co.  v.  Excelsior 

Needle  Co 167  F.  R 41 


TABLE    OF    CITED    CASES  lxXW'ii 

Names  of  Cases.  Where  Reported.  Pages  in  tlii^  h.,.,k. 

Elastic  Fabrics  Co.  v.  Smith 100  U.  S 271,  606,  738 

Eldrcd  v.  Breitwieser 132  F.  R 544 

Eldred  v.  Kessler 106  F.  R 447 

Eldred  v.  Kirkland 130  F.  R 709 

Electrical  Accumulator  Co.  v.  Brush 

Electric  Co 44  F.  R 401 

Electrical  Accumulator  Co.  v.  Brush 

Electric  Co 52  F.  R 207 

Electrical  Accumulator  Co.  v.  Julien 

Electric  Co 38  F.  R 43,  58,  70,  78,  265,  268 

Electrical  Accumulator  Co.  v.  Julien 

Electric  Co 47  F.  R 778 

Electrical  Accumulator  Co.    v.   New 

York  &  Harlem  R.  R.  Co 50  F.  R 286 

Electric  Boat  Co.  v.   Lake  Torpedo 

Boat  Co 215  F.  R 674 

Electric  Boot  &  Shoe  Finishing  Co. 

v.  Little 75  F.  R 537 

Electric     Candy     Machine     Co.     v. 

Morris 156  F.  R.  .  .  .37,  239,  241,  247,  448 

PHectric  Controller,  etc.,  Co.  v.  West- 

inghouse,  etc.,  Co 171  F.  R 56 

Electric  Gas  Lighting  Co.  v.  Boston 

Electric  Co 139  U.  S 292 

Electric  Gas  Lighting  Co.  v.  Fuller.  .59  F.  R 735 

Electric  Goods  Mfg.  Co.  v.  Benjamin 

Electric  Co 169  F.  R 511 

Electric  Mfg.  Co.  v.  Edison  Electric 

Light  Co 61  F.  R 766 

Electric  Protection  Co.  v.  American 

Bank  Protection  Co 184  F.  R 433,  434 

Electric  Ry.   Co.  v.  Jamaica  R.   R. 

Co 61  F.  R 29,  49 

Electric    Signal    Co.    v.    Hall    Signal 

Co 114  U.  S 430 

Electric  Smelting  &   Aluminum   Co. 

v.  Carborundum  Co 102  F.  R 54,  219 

Electric  Smelting  &   Aluminum   Co. 

v.  Carborundum  Co 189  F.  R 789 

Electric  Smelting  &  Aluminum  Co. 

v.  Pittsburg  Reduction  Co Ill  F.  R 422 

Electric  Storage  Battery  Co.  v.  Gould 

Storage  Battery  Co 158  F.  R 231 


IxXXViii  TABLE    OF   CITED    CASES 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Electric  Vehicle  Co.  v.  Winton  Motor- 
Carriage  Co 104  F.  R 684 

Elgin   Butter  Tub  Co.  v.  Creamery 

Package  Mfg.  Co 80  F.  R 240 

Elgin  Wind  Power  Co.  v.  Nichols.  . .  .65  F.  R 360,  469,  472,  657 

Elgin  Wind  Power  Co.  v.  Nichols. ...  105  F.  R 813 

Elizabeth  v.  Pavement  Co 97  U.  S.  .84,  113,  114,  115,  120,  381, 

456,  492,  503,  804,  805,  808,  818,  828 

Elliot  v.  Piersol 1  Peters 781 

Elliott  Machine  Co.  v.  Center 227  F.  R 397 

Elliott-Fisher  Co.  v.  Underwood  Type- 
writer Co 176  F.  R 209,  559 

Elliott  &  Co.  v.  Youngstown  Car  Mfg. 

Co 181  F.  R 558 

Elliott    &    Hatch    Book-Typewriter 

Co.  v.  Fisher  Typewriter  Co 109  F.  R 518 

Ellit horp  v.  Robertson 4  Blatch 75 

Elm  City  Co.  v.  Wooster 6  Fisher 119 

Elmendorf  v.  Taylor 10  Wheaton 697 

Ely  v.  Mfg.  Co 4  Fisher 748,  771 

Emack  v.  Kane 34  F.  R 649 

Emerson  v.  Hogg 2  Blatch 146 

Emerson  v.  Hubbard 34  F.  R 699 

Emerson  v.  Lippert 31  F.  R 204 

Emerson  v.  Simm 6  Fisher 614,  630 

Emerson  Co.  v.  Nimocks 88  F.  R ".564 

Emerson  Co.  v.  Nimocks 99  F.  R 132,  218 

Emerson   &    Norris    Co.    v.   Simpson 

Bros.  Corp 202  F.  R 95 

Emerson    &    Norris   Co.    v.   Simpson 

Bros.  Corp 214  F.  R 736 

Emigh  v.  Chamberlin 2  Fisher 374 

Emigh  v.  Railroad  Co 6  F.  R 617,  637,  807,  825,  826 

E.  M.  Miller  Co.  v.  Meriden  Bronze 

Co 80  F.  R 72 

Empire  Cream  Separator  Co.  v.  Elec- 
tric Candy  Machine  Co ...  .166  F.  R 242 

Empire  Cream  Separator  Co.  v.  Sears, 

Roebuck  &  Co 157  F.  R 141,  769 

Empire  State  Nail  Co.  v.   American 

Button  Co 61  F.  R 753,  760 

Empire    State    Nail    Co.    v.    Faulk- 
ner  55  F.  R 340 


TABLE    OF    CITED    CASES  lxxxi.X 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Engle  Sanitary  &  Cremation  Co.  v. 

City  of  Elwood 73  F.  R 437,  438 

Enterprise  Mfg.  Co.  v.  Deisler 46  F.  R 707 

Enterprise  Mfg.  Co.  v.  Sargent 28  F.  R 45 

Enterprise  Mfg.  Co.  v.  Sargent 48  F.  R 798 

Enterprise  Mfg.  Co.  v.  Snow 72  F.  R ;,\s 

Enterprise  Mfg.  Co.  v.  Snow 80  F.  R 425,  588 

Enterprise     Mfg.     Co.     v.     William 

Shakespeare,  Jr.,  Co 220  F.  R 45 

Epstein  v.  Dryfoos 229  F.  R 57 

Erie  Railway  Co.  v.  Ramsay 45  New  York 781 

Erie  Rubber  Co.  v.  American  Dunlop 

Tire  Co 70  F.  R 535 

Estey  v.  Burdett 109  U.  S 34 

Esty  v.  Newton 14  App.  D.  C 168 

Eunson  v.  Dodge 18  Wallace 320 

Evans  v.  Eaton 3  Wheaton 259,  530,  534,  575 

Evans  v.  Eaton 7  Wharton 610 

Evans  v.  Hettich 7  Wheaton 592 

Evans  v.  Jordan 9  Cranch 310 

Evans  v.  Suess  Glass  Co 83  F.  R 737 

Everest  v.  Oil  Co 20  F.  R 94 

Everest  v.  Oil  Co 22  F.  R 721 

Everett  v.  Haulenbeek 68  F.  R 472 

Everett  v.  Thatcher 3  Bann.  &  Ard 758 

Evory  v.  Burt 15  F.  R 440 

Ewart  Mfg.  Co.  v.  Baldwin  Cycle- 
Chain  Co .91  F.  R 619 

Ewart  Mfg.  Co.  v.  Iron  Co 31  F.  R 454 

E.  W.  Bliss  v.  Atlantic  Handle  Co.  .  .212  F.  R 501 

Excelsior  Wooden  Pipe  Co.  v.  Allen.  .  104  F.  R 486 

Excelsior  Wooden  Pipe  Co.   v.   City 

of  Seattle 117  F.  R 486 

Excelsior  Wooden  Pipe  Co.  v.  Pacific 

Bridge  Co 185  U.  S 472 

Exchange  Scrip  Book  Co.  v.  Rand, 

McNally  &  Co 194  F.  R 5 

Exchange  Scrip  Book  Co.  v.  Rand, 

McNally  &  Co 203  F.  R 5 

Expanded    Metal    Co.    v.    Board    of 

Education 103  F.  R 243 

Expanded  Metal  Co.  v.  Bradford 214  U.  S 4,  58,  59,  216 

Ex  parte  Frasch 192  U.  S 152,  154 


\c  TABLE   OF   CITED    (ASKS 

Names  of  <  !ases.  Where  Reported.  Pages  in  this  book. 

Ex  parte  Messenger 78  O.  (I 179 

Ex  parte  National  Enamelling  Co.  .    201  U.  S 720,  735 

Ex  parte  Robinson 2  Bissell 190 

Ex  rel.  Bigelow 2  McArthur 160 


Facer  v.  Mid  vale  Steel-Work  Co 38  F.  R 787 

Fairbanks  Wood  Rim  Co.  v.  Moore.  .78  F.  R 32 

Fairchild  v.  Dement 164  F.  R 331,  332 

Falley  v.  Giles 29  Indiana 335 

Farley  v.  Steam  Gauge  Co 1  McArthur's  Patent  Cases.  ...     87 

Farmers'  Mfg.  Co.  v.  Corn-Planter  Co.128  U.  S 296 

Farmers'    Mfg.    Co.   v.   Spruks   Mfg. 

Co 119  F.  R 436,  438,  501 

Farmers'  Mfg.  Co.  v.  Spruks  Mfg.  Co.127  F.  R 55,  SO 

Farrell  v.  Boston,  etc.,  Silver  Mining 

Co 121  F.  R 51,  246 

Farrell  v.  United  Verde  Copper  Co. .  .  121  F.  R 675 

Farrington  v.  Detroit 4  Fisher 321 

Farrington  v.  Gregory 4  Fisher 365 

Faulks  v.  Kamp 17  Blatch 341 

Fay  v.  Cordesman 109  U.  S 222,  234,  434 

Fay  v.  Mason 120  F.  R 148,  288,  289 

Fay  v.  Mason 127  F.  R 259,  260 

F.  C.  Austin  Mfg.  Co.  v.  American 

Wellworks 121  F.  R 783 

F.  D.  Cummer  &  Son  Co.  v.   Atlas 

Dryer  Co 193  F.  R 103,  277 

Featherstone  v.  Cycle  Co 53  F.  R 226,  492,  499 

Featherstone  v.  Cycle  Co .  .  .57  F.  R 292 

Feder  v.  A.  B.  Fiedler  &  Sons 116  F.  R 474 

Federal  Const.  Co.  v.  Park  Improve- 
ment Co 166  F.  R 198 

Fefel  v.  Stocker 17  App.  D.  C 168 

F.   E.    Myers  &   Bro.    v.    Fairbanks, 

Morse  &  Co 194  F.  R 52 

Fenton  Metallic  Mfg.   Co.   v.  Office 

Specialty  Co 12  App.  D.  C 834 

Fermentation  Co.  v.  Maus 122  U.  S 7 

Ferrett  v.  Atwill 1  Blatch 413,  415 

Ferro  Concrete  Construction   Co.   v. 

Concrete  Steel  Co 206  F.  R 59 


TABLE    OF    CITED    CASKS  Xci 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Fetter  v.  Newhall 17  F.  R 330 

F.  F.  Slocumb  &  Co.  v.  A.  C.  Layman 

Machine  Co 227  F.  It 363 

Fichtel  v.  Barthel 173  F.  It 643 

Field  v.  De  Comeau 116  U.  S 425 

Fielding  v.    Grouse,  Hinds  Electric 

Co 148  F.  It 57 

Filley  v.  Stove  Co 30  F.  R 276,  431 

Fireball     Gas     Co.     v.     Commercial 

Acetylene  Co 198  F.  R 784 

Fireball     Gas     Co.     v.     Commercial 

Acetylene  Co 239  U.  S 784 

Fishel  Nessler  Co.  v.  Fishel  &  Co .  .  .204  F.  R 350 

Fischer  v.  Hayes 6  F.  R 561 

Fischer  v.  Hayes 16  F.  R 835,  836 

Fischer  v.  Hayes 39  F.  R 807 

Fischer  v.  Neil 6  F.  R 324 

Fish  v.  Manning 31  F.  R 415 

Fisher  v.  Amador  Mine 25  F.  R 381 

Fisk,  Clark  &  Flagg  v.  Hollander.  .  .  .MacArthur  &  Mackay 230,  329 

Fitch  v.  Bragg 16  F.  R 622 

F.  J.  Rowley  Co.  v.  Columbus  Phar- 

mical  Co 220  F.  R 453 

Florsheim  v.  Schilling 137  U.  S 31,  46,  82,  243 

Flower  v.  Detroit 127  U.  S 300 

Folger  &  Moriarity  v.  Dow  Portable 

Electric  Co 128  F.  R 441 

Folly  v.  Kitson 120  U.  S 687 

Fond  Du  Lac  County  v.  May 137  U.  S 40,  51 

Foos  Mfg.  Co.  v.  Thresher  Co 44  F.  R 236 

Foote  v.  Parsons  Non-Skid  Co 196  F.  R 544 

Foote  v.  Silsby 1  Blatch 534 

Foote  v.  Stein 35  F.  R 722 

Forbes  v.  Stove  Co 2  Cliff 306 

Forbush  v.  Bradford 1  Fisher 767,  773 

Forbush  v.  Cook 2  Fisher 41,  135 

Force  v.  Sawyer-Boss  Mfg.  Co Ill  F.  It 547 

Force  v.  Sawyer-Boss  Mfg.  Co 143  F.  R 622,  809 

Ford  v.  Bancroft 98  F.  R 424 

Ford  Morocco  Co.  v.  Tannage  Pat- 
ent Co 84  F.  R 422 

Ford    Motor    Co.     ;>.     International 

Automobile  League 209  F.  R 397 


\cil  TABLE    OF    CITED    CASKS 

Names  of  Cases.  w  h.n   ( : <  j .. . r i < ■< i .  Pukcs  in  this  book. 

Ford    Motor    Co.    v.    Union    Motor 

Sales  Co 225  F.  R 397 

Forehand  v.  Porter 15  F.  R 676 

Forest  City  Foundry  &   Mfg.  Co.  r. 

Barnard 176  F.  R 219 

Forgie  i>.  Oil  W6U  Supply  Co .r>7  F.  R 5:},  246 

Forgie  v.  Oil  Well  Supply  Co 58  F.  R 63 

Forncrook  v.  Root 127  U.  S 438 

Forschner  v.  Baumgarton 26  F.  R 31 

Forsyth  v.  Garlock 142  F.  R 55 

Forsyth  v.  Hammond 166  U.  S 740 

Fosdick  v.  Lowell  Machine  Shop 58  F.  R 681 

Foss  v.  Herbert 1  Bissell 423 

Foss  v.  Herbert 2  Fisher 437 

Foster  v.  Antisdel 14  App.  D.  C 167 

Foster  v.  Crossin 23  F.  R 80,  751,  759 

Foster  v.  Crossin 44  F.  R 22,  53 

Foster  v.  Moore 1  Curtis 756,  775 

Foster  Hose  Supporter  Co.  v.  Taylor.  184  F.  R 370,  374 

Foster  Hose  Supporter  Co.  v.  Taylor.  191  F.  R 374 

Fougeres  v.  Murbarger 44  F.  R 649,  650 

Foundation    Co.    v.    O'Rourke    Eng. 

Const.  Co 171  F.  R 644 

Fowler  v.  City  of  New  York 121  F.  R 21,  644 

Fowler  &  Wolfe  Mfg.  Co.  v.  M'Crum- 

Howell  Co 215  F.  R 248 

Fowler  &  Wolfe  Mfg.  Co.  v.  National 

Radiator  Co 172  F.  R 238 

Fox  v.  Knickerbocker  Engraving  Co .  .  158  F.  R 617 

Fox  v.  Perkins 52  F.  R 57 

Fraim  v.  Iron  Co 27  F.  R 765 

Francis  v.  Flinn 118  U.  S 650 

Frank  v.  Bernard 131  F.  R 547 

Frank  v.  Geiger 121  F.  R 632 

Franklin  &  Co.  v.  Illinois  Moulding 

Co 128  F.  R 295 

Franklin  &  Co.  v.  Illinois  Moulding 

Co 138  F.  R 292 

Frasch  v.  Moore 211  U.  S 176,  732 

Fraser  v.  Duffey 196  F.  R 673 

Frederick  R.  Stearns  &  Co.  v.  Rus- 
sell  85  F.  R 53,  240,  246,  257  ' 

Freeman  v.  Asmus 145  U.  S 232,  300 


TABLE    OF    CITED    CASES  Xciii 

Names  of  Cases.  Where  Reported.  Pages  in  this  book, 

Frcesc  v.  Swartchild 35  F.  R 562 

Free  Sewing  Machine  <  !o.  v.  Bry-Block 

Mercantile  Co 204  F.  R 397 

French  v.  Carter 137  U.  S 35,  59 

French  v.  Edwards 21  Wallace 599 

French  v.  Rogers 1  Fisher 298 

Fresno  Home-Packing  Co.   v.   Fruit- 
Cleaning  Co 101  F.  R 329 

Fried-Krupp    Aktien-Gesellschaft    v. 

Midvale  Steel  Co 191  F.  R 259 

Fruit-Cleaning  Co.  v.  Fresno  Home- 
Packing  Co 94  F.  R 210,  479 

Fry  v.  Quinlan 13  Blatch 1 56 

Fry  v.  Yeaton 1  Cranch's  Circuit  Court  Rep .  .  604 

F.  Speidel  Co.  v.  Barstow  Co 232  F.  R 671 

Ft.  WajTie,   Cincinnati  &  Louisville 

R.  R.  Co.  v.  Haberkorn 1  Ind.  App 357,  365 

Fuller  v.  Berger 120  F.  R 101 

Fuller  v.  Field 82  F.  R 820 

Fuller  v.  Gilmorc 121  F.  R 772 

Fuller  v.  Yentzer 94  U.  S 234,  242,  433 

Fuller  &  Johnson  Mfg.  Co.  v.  Bart- 

lett 68  Wis 380 

Fullerton   Walnut   Growers   Ass'n   v. 

Anderson-Barngrower  Mfg.  Co .  .  166  F.  R 253,  258,  422,  821 

F.  Wesel  Mfg.  Co.  v.  Printing  Ma- 
chinery Co 218  F.  R 249 


Gage/;.  Herring 107  U.  S 270,  304,  595 

Gage  v.  Kellogg 26  F.  R : 722 

Gains    v.    Alabama    Consol.    Coal   & 

Iron  Co 173  F.  R 652 

Gallahue  v.  Butterfield 10  Blatch 303 

GaUiher  v.  Cadwell 145  U.  S 680 

Gamewell  P^ire  Alarm  Telegraph  Co. 

v.  Brooklyn 14  F.  R 357,  484 

Gamewell  Fire-Alarm  Telegraph  Co. 

v.  Chillicothe 7  F.  R 510 

Gamewell  Fire-Alann  Telegraph  Co. 

v.     Hackensack     Improvement 

Commission 199  F.  R 767 


XC1V  TABLE   OF   CITED    CASES 

Namee  ol  <  !a  e  Where  Reported.  Pages  in  this  book. 

Gamewcll     Fire-Alarm    Tel.    Co.    v. 

Municipal  Signal  Co 61  F.  R 785,  794 

( iandy  v.  Belting  Co 28  F.  R 120 

Candy  v.  Belting  Co 143  U.  S 28,  55,  103,  121,  519 

<  landy  v.  Marble 122  U.  S 159,  ltil 

Gardners  Herz 118  U.  S 21,   31 

( iardner  v.  Howe 2  Cliff 202 

Garretson  v.  Clark 4  Bann.  &  Aril 829 

Garaetson  v.  Clark Ill  U.  S 813 

Gas   Machinery   Co.   v.   United   Gas 

Improvement  Co 228  F.  R 37 

Gates  Lron  Works  v.  Fraser 42  F.  R 49 

Gates  Iron  Works  v.  Fraser 153  U.  S 51,  246 

Gates  Iron  Works  v.  Kimbell  &  Cobb 

Stone  Co 79  F.  R 708 

Gay  v.  Cornell 1  Blatch 157,  324 

Gayler  v.  Wilder 10  Howard.  .78,  90,  323,  325,  326, 

346,  357,  484 
Gear  v.   Fairmount  Electric  &  Mfg. 

Co 231  F.  R 231 

Gear  v.  Fitch 3  Bann.  &  Ard 338 

Gear  v.  Grosvenor 1  Holmes 316,  317 

Geis  v.  Kimber 36  F.  R 494 

General  Bakelite  Co.  v.  Nikolas 207  F.  R 643 

General  Chemical  Co.  v.  Blackmore.  .  156  F.  R 402 

General  Compressed  Air,  etc.,  Co.  v. 

American  Air  Cleaning  Co 177  F.  R 431,  432 

General  Electric  Co.  v.  Allis-Chalmers 

Co 197  F.  R 448 

General  Electric  Co.  v.  Am.  Brass  & 

Copper  Co.  .  .  , 209  F.  R 644 

General    Electric    Co.    v.    Brooklyn 

Heights  R.  Co 118  F.  R 424 

General  Electric  Co.  v.  Bullock  Elec- 
tric Mfg.  Co 152  F.  R 55,  219 

General  Electric  Co.  v.  Crouse-Hinds 

Electric  Co 147  F.  R 601 

General  Electric  Co.  v.  Inter.  Spe- 
cialty Co 126  F.  R 238 

General    Electric    Co.    v.    Germania 

Electric  Co 174  F.  R 259 

General  Electric  Co.   v.   Hill-Wright 

Electric  Co 174  F.  R 422 


TABLE    OF    CITED    CASES  X<\ 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

General  Electric  Co.  v.  Laco-Phillips 

Co 233  F.  R 459 

General  Electric  Co.  v.  Morgan- 
Gardner  Electric  Co 159  F.  R 463 

General  Electric  Co.  v.  Morgan- 
Gardner  Electric  Co 167  F.  R L65 

General  Electric  Co.  v.  New  England 

Electric  Mfg.  Co 128  F.  R 787 

General   Electric    Co.    v.    Richmond 

Street&  I.  Ry.  Co 178  F.  R 291 

General   Electric  Co.   v.   Star  Brass 

Works 109  F.  R 694 

General  Electric  Co.  v.  Sutter 186  F.  R 40:} 

General  Electric  Co.  v.  Wagner  Elec- 
tric Mfg.  Co 123  F.  R 715 

General  Electric  Co.  v.  Winsted  Gas 

Co 110  F.  R 464 

General  Electric  Co.  v.  Wise 119  F.  R 776 

General  Electric  Co.  v.  Yost  Electric 

Mfg.  Co 131  F.  R 57 

General  Electric  Co.  v.  Yost  Electric 

Mfg.  Co 139  F.  R 45 

General  Electric  Co.  v.  Yost  Electric 

Mfg.  Co 208  F.  R 682 

General   Gaslight   Co.    v.    Matchless 

Mfg.  Co 129  F.  R 22,  46 

General      Subconstruction      Co.      v. 

Netcher 174  F.  R 4 

Gennert  v.  Burke  &  James,  Inc 231  F.  R 664,  672 

Geo.  Ertel  Co.  v.  Stahl 65  F.  R 755,  761 

George  Frost  Co.  v.  Cohn 119  F.  R 32 

George  Frost  Co.  v.  Samstag 180  F.  R 32 

G.  H.  Day  v.  Mountain  City  Mill ...  225  F.  R 667 

Gerard  v.  Safe  &  Lock  Co 48  F.  R 696 

Germain  v.  Wilgus 67  F.  R 648 

German-American  Filter  Co.  v.  Erd- 

rich 98  F.  R 82 

German-American  Filter  Co.  v.  Loew 

Filter  Co 103  F.  R 494 

Giant  Powder  Co.  v,  Nitro  Powder 

Co 19  F.  R 288,  298,  657 

Gibbs  v.  Hoefner 19  F.  R 99,  374 

Gibson  v.  Cook 2  Blatch 336,  339 


XCV1  TABLE    OF   CITED   CASES 

Names  of  Cases.  WTxere  Reported.  Pages  is  this  book. 

Gibson  v.  Gifford 1  Blatch 311 

Gibson  V.  Harris 1  Blatch 298 

( }ibson  v.  Van  Dresar 1  Blatch 771,  775 

Gilbert  it   Barker  Mfg.  Co.  v.  Buss- 
ing   12  Blatch 381,  776 

Gilbert  Mfg.   Co.  v.  Post  <fc  Lester 

Co 189  F.  R 652 

Gilchrist  Co.  v.  Erie  Specialty  Co.. .  .231  F.  R 545 

<  tiles  v.  Heysinger 150  U.  S 44 

( iill  v.  United  States 160  U.  S 377,  380 

GUI  v.  WeUs.    22  Wallace 135,  302,  303,  432 

Gillespie  v.  Cummings 3  Sawyer 510 

Gillette  v.  Sendelbach 146  F.  R 159 

Gillette  Safety  Razor  Co.  v.  Durham 

Duplex  Razor  Co 197  F.  R 448 

Gillette  Safety  Razor  Co.  v.  Wolf.  ...  180  F.  R 800 

Gilmore  v.  Anderson 38  F.  R 764 

Gilmore  v.  Golay 3  Fisher 404 

Gilpin  v.  Consequa 3  Washington 631 

Gimbel  v.  Hogg 97  F.  R 632,  633 

Gindorff  v.  Deering 81  F.  R 4 

Glaenzer  v.  Wiederer 33  F.  R 765 

Glauber  v.  H.  Mueller  Mfg.  Co 169  F.  R 117,  454 

Glenn  v.  Adams 12  App.  D.  C 173 

Gloucester  Isinglass  Co.  v.  Brooks.  .  .  19  F.  R 173 

Gloucester  Isinglass  Co.  v.  Le  Page.  .30  F.  R 53,  544 

Glucose   Sugar   Refining   Co.    v.    St. 

Louis  Syrup,  etc.,  Co 135  F.  R 501 

Glue  Co.  v.  Upton 97  U.  S 34 

GodeU  v.  Wells  &  French  Co 70  F.  R 366 

Godfrey  v.  Eames 1  Wallace 177 

Goebel  v.  Supply  Co 55  F.  R 518,  646 

Gold  &  Silver  Ore  Co.  v.  Disintegrat- 
ing Ore  Co 6  Blatch 233,  398 

Gold    &    Stock    Telegraph    Co.     v. 

Pearce 19  F.  R 798 

Gold    &    Stock    Telegraph    Co.     v. 

Telegram  Co 23  F.  R 204 

Goldie  v.  Diamond  State  Iron  Co 81  F.  R 431 

Goldie  v.  Iron  Co 64  F.  R 58,  588 

Goldsmith  v.  Collar  Co 18  Blatch 483 

Gompers  v.   Buck's  Stove  &  Range 

Co 221  U.  S 802 


TABLE    OF    CITED    CASES  XCvii 

Names  of  Cases.                                                Where  Reported.              Pages  in  this  book. 
Goodwin  Film  &  Camera  Co.  v.  Mast- 
man  Kodak  Co 213  P.  E 249 

Goodyear  v.  Allyn 6  Blatcli 584,  69  1 ,  765 

Goodyear  v.  Berry 3  Fisher    7r,  | 

Goodyear  v.  Bishop 4  Blatch tst; 

Goodyear  V.  Bishop 2  Fisher 613,  623,  631 

Goodyear  v.  Gary 4  Blatch 336 

Goodyear  v .  Hills 3  Fisher 77.", 

Goodyear  v.  Hullihen 3  Fisher 305 

Goodyear  v.  McBurney 3  Bla1  eh 4,xf) 

Goodyear  v.  Mullee 5  Blatch 490,  800 

Goodyear  v.  Mullee 3  Fisher 572 

Goodyear  v.  Railroad  Co . .  1  Fisher 34G,  7f>l 

Goodyear  v.  Rubber  Co 3  Blatch 376,  769 

Goodyear  v.  Rubber  Co 1  Cliff 320 

Goodyear  v.  Vulcanite  Co 2  Fisher 59 

Goodyear    Dental    Vulcanite    Co.    v. 

Davis 3  Bann.  <fr  Ard 700 

Goodyear    Shoe    Machinery    Co.    v. 

Dancel 119  F.  R 372 

Goodyear    Shoe    Machinery    Co.    v. 

Jackson 112  F.  R 3G4 

Goodyear  Shoe  Mach.  Co.  v.  Spauld- 

ing 101  F.  R 404 

Goodyear  Tire  &  Rubber  Co.  v.  Rub- 
ber Tire  &  Wheel  Co 164  F.  R 794,  795 

Gordon  v.  Anthony 16  Blatch .*.  .   481 

Gordon  v.  Harvester  Works 23  F.  R 490 

Gordon  v.  Tusco-Halvah  Co 233  F.  R 79S 

Gordon  v.  Warder 150  U.  S 438 

Gorham  v.  White 14  Wallace 401 

Gormley  &  Jeffrey  Tire  Co.  v.  United 

States  Agency 177  F.  R 709 

Goshen  Mfg.  Co.  v.  Hubert  A.  Myers 

Mfg.  Co 215  F.  R 788 

Goshen     Sweeper      Co.      v.      Bissell 

Sweeper  Co 72  F.  R 431 

Goss  v.  Cameron 14  F.  R 4 

Goss  Printing-Press  Co.  v.  Scott 103  F.  R 21,  82 

( loss  Printing-Press  Co.  v.  Scott 108  F.  R 44,  103 

Goss  Printing-Press  Co.  v.  Scott 134  F.  It 700,  800 

Gottfried  v.  Brewing  Co 5  Bann.  &  Ard 579 

Gottfried  v.  Brewing  Co 13  F.  R 676 


xrvui  TABLE   OF   CITED   CASES 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Gottfried  v.  Brewing  Co 22  F.  R 619 

Gottfried  r.  Miller 104  U.  S 329 

Gottfried  v.  Moerlein 14  F.  R 676 

Gould  v.  Sessions 67  F.  R 797,  799 

( loul.l  v.  Spicer 15  F.  R 304,  595 

Could  Coupler  Co.  v.  Pratt 70  F.  R 438,  441 

Could    &    Eberhardl     v.     Cincinnati 

Shaper  Co 194  F.  R 41 

Graff,  Washbourne  <fe  Dunn  v.  Web- 
ster  195  F.  11 46,  462 

Graham  v.  Crawford  Mfg.  Co 11F.R 118,  234 

Graham  v.  Earl 82  F.  R 268,  489,  520 

Graham  v.  Johnston 21  F.  R Ill 

Graham  v.  Mfg.  Co 11  F.  R 85,  118,  230,  639 

Graham  v.  Mfg.  Co 24  F.  R 613,  615 

Graham  v.  Mason 5  Fisher 440 

Graham  v.  Mason 1  Holmes 806,  818 

Graham  v.  McCormick 5  Bann.  &  Ard.  .  .85,  118,  178,  234 

Graham  v.  McCormick 11  F.  R 230 

Graham  v.  Teter 25  F.  R 157 

Gramme  Electrical  Co.  v.  Electric  Co. .  17  F.  R 204,  205 

Grand    Rapids    Show    Case    Co.    v. 

Baker 216  F.  R 290,  291,  442 

Grand    Rapids    Show    Case    Co.    v. 

Strauss 229  F.  R 661 

Grant  v.  Raymond 6  Peters.  124,  180,  229,  279,  289,  296, 

308,  318,  530,  595 

Grant  v.  Walter 148  U.  S 220 

Graver  v.  Faurot 162  U.  S 608,  740 

Gray  v.  Grinberg 147  F.  R ' 477 

Gray  v.  Grinberg 159  F.  R 477,  642 

Gray  v.  Halkyard 28  F.  R 715 

Gray  v.  James 1  Peters'  Circuit  Court  Reports   125 

519,  579 
Gray  Telephone  Pay  Station  Co.  v. 

Baird  Mfg.  Co/ 174  F.  R 69,  84,  255,  256 

Green  v.  Austin 22  O.  G 489 

Green  v.  Barney 19  F.  R 681 

Green  v.  Biddle 8  Wheaton 186 

Green  v.  Bogue 158  U.  S 657 

Green  v.  City  of  Lynn 55  F.  R 546,  706,  711 

Green  v.  City  of  Lynn 81  F.  R 511,  601 

Green  v.  French 4  Bann.  &  Ard.  .681,  769,  771,  772 


TABLE   OF   CITED    CASES  XC1X 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Green  v.  French 11  F.  It 93 

Green  v.  Gardner 22  0.  G 490 

Greene  v.  Bishop 1  Cliff 839,  8 10 

Greene  v.  Buckley 120  F.  R 501,  503 

Greene  v.  Buckley 135  F.  R 255 

Greenleaf  v.  Mfg.  Co 17  Blatch 619 

Green wald  Bros.  v.  LaVogue  Petticoat 

Co 226  F.  R 95 

Greenwood  v.  Bracher 1  F.  R 760 

Greenwood  v.  Dover 194  F.  R 160 

Grelle  v.  City  of  Eugene 221  F.  R 50,  462 

Grever  v.  United  States  Hoffman  Co .  .202  F.  R 103,  255 

Grier  v.  Baynes 46  F.  R 375 

Grier  v.  Baynes 49  F.  R 354 

Grier  v.  Wilt 120  U.  S 542 

Griffen  v.  Swenson 15  App.  D.  C 170 

Griffith  v.  Segar 29  F.  R 511 

Griffith  v.  Shaw 89  F.  R 547 

Grimes  v.  Allen 102  F.  R 46 

Groth  v.  Postal  Supply  Co 61  F.  R 252 

Grover  &  Baker  Sewing  Mach.  Co. 

v.  Williams 2  Fisher 747,  756,  758 

Grupe,  Drier  &  Boiler  Co.  v.  Geiger, 

Fiske  &  Koop 215  F.  R 435 

Guaranty  Trust  Co.  v.  Green  Cove 

Railroad 139  U.  S 145,  341 

Guidet  v.  Brooklyn 105  U.  S 34 

Guidet  v.  Palmer 10  Blatch 775 

Guille  v.  Swan 19  Johnson  (N.  Y.) 491 

Gunn  v.  Savage 30  F.  R 240 

Guyon  v.  Serrell 1  Blatch 627 


Haarmann  v.  Lueders 109  F.  R 642 

Haffcke  v.  Clark 46  F.  R 2,  217 

Haffcke  v.  Clark 50  F.  R 374 

Hagan  v.  Swindell 204  F.  R 448 

Hailes  v.  Albany  Stove  Co 123  U.  S.  .264,  265,  266,  269,  271, 

300 

Hailes  v.  Van  Wormer 20  Wallace 37 

Haines  v.  McLaughlin 135  U.  S 595,  596 

Haines  v.  Peck 26  F.  R 296 


c  tam.i:   OF  CITED   casks 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Hake  r.  Broun A7  F.  E 277 

Hake  V.  Brown 44  F.  II 726 

Hale  &  Kilboura  Mfg.  Co.  v.  Hart- 
ford Mai  tresa  Co 36  F.  R 53 

Hale  &  Kilburn  Mfg.  Co.  v.  Oneonta, 

etc.,  Ry.  Co 124  F.  R 50,  54 

Hale  &  Kilburn  Mfg.  Co.  V.  Oneonta, 

etc.,  Ry.  Co 129  F.  R 73,  557 

Hall  v.  Macnealc 107  U.  S 48,   L19 

Hall  v.  Stern 20  F.  11 623 

Hall  v.  Wiles 2  Blatch 270,  628 

Hall    Mammoth     Incubator    Co.    v. 

Teabout 205  F.  R 435 

Hall    Mammoth    Incubator    Co.    v. 

Teabout 215  F.  R 433,  435 

Hall  Signal  Co.  v.  General  Ry.  Signal 

Co 153  F.  R 754 

Hall  Signal  Co.  v.  General  Ry.  Signal 

Co 169  F.  R 57,  58,  249 

Hall  Signal  Co.  v.  General  Ry.  Signal 

Co 171  F.  R 795 

Hall  Signal  Co.  v.   Union  Switch  & 

Signal  Co 115  F.  R 578 

Hallock  v.  Babcock 124  F.  R 141,  750 

Halstead  v.  Grinnan 152  U.  S 680 

Hamilton  v.  Diamond  Drill  &  Mach. 

Co 137  F.  R 797 

Hamilton  v.  Kingsbury 15  Blatch 362,  373 

Hamilton  v.  Kingsbury 17  Blatch 357,  362,  365 

Hamilton  v.  Rollins 3  Bann.  &  Ard 334 

Hamilton  v.  Simons 5  Bissell 799 

Hammacher  v.  Wilson 26  F.  R 369 

Hammacher  v.  Wilson 32  F.  R .  .  : 840 

Hammerschlag  v.  Garrett 10  F.  R 421 

Hammerschlag  Mfg.  Co.  v.  Bancroft .  32  F.  R 708 

Hammerschlag  Mfg.  Co.  v.  Spalding. 35  F.  R 708 

Hammond  v.  Hunt 4  Bann.  &  Ard 485 

Hammond  v.  Organ  Co 92  U.  S 375 

Hammond  Buckle  Co.   v.   Goodyear 

Rubber  Co 49  F.  R 763 

Hammond  Buckle  Co.  v.  Goodyear 

Rubber  Co \  . .  .58  F.  R 58 

Hammond's  Appeal 2  O.  G 152 


TABLE    OF   CITED    CASES  CI 

Nanus  of  Casea.  Where  Reported.  Pages  in  thi 

Hancock  Inspirator  Co.  v.  Jenks  .  .  .  .21  F.  R 135,  141,  221 

Hanger  v.  Abbott 0  Wallace 508 

Hanifen  v.  Armitage 117  F.  It 28 

Hanifen  v.  E.  H.  Godshalk  Co 78  F.  R 89,  578,  724 

Hanifen  v.  E.  H.  Godshalk  Co 84  F.  R 72 

Hanifen  v.  Lupton 95  F.  R ;;70 

Hanifen  v.  Price 96  F.  R 89 

Hanifen  v.  Price 102  F.  R .710 

Hanks  Dental  Assn.  v.  International 

Tooth  Crown  Co 122  F.  R 543 

Hanlon  v.  Primrose 56  F.  It 684 

Hans  v.  Louisiana 134  U.  S 488 

Hansen  v.  Slick 216  F.  R 159,  160,  682 

Hapgood  v.  Hewitt 119  U.  S 324,  373 

Hapgood  v.  Rosenstock 23  F.  R 345 

Harding  v.  Handy 11  Wheaton 838,  840 

Hardinge  Conical  Mill  Co.   v.   Abbe 

Engineering  Co 195  F.  R 260 

Hardison  v.  Brinkman 156  F.  R 236,  442 

Hardwick  v.  Masland 71  F.  R 562 

Harley  v.  United  States 198  U.  S 194 

Harmon  v.  Bird 22  Wendell  (N.  Y.) 328 

Harmon  v.  Struthers 43  F.  R 115,  446,  447 

Harmon  v.  Struthers 48  F.  R 544 

Harmon  v.  Struthers 57  F.  R 115 

Harper  v.  Butler 2  Peters 483 

Harper  &  Reynolds  Co.  v.  Wilgus  .  .  .  56  F.  R 557 

Harris  v.  Allen 15  F.  R 436 

Harris  v.  Stern  and  Lotz 105  O.  G 168 

Harrison  v.  Morton 83  Md 323,  346 

Hart  &  Hegeman  Mfg.  Co.  v.  Anchor 

Electric  Co 92  F.  R 287 

Hartell  v.  Tilghman 99  U.  S 471 

Hartshorn  v.  Barrel  Co 119  U.  S 241,  293,  295 

Hartshorn  v.  Day 19  Howard 330 

Hartshorn  v.  Roller  Co 18  F.  R 295 

Harwood  v.  Mfg.  Co 3  Fisher 440 

Hascall  v.  Whitman 19  Me 190 

Haselden  v.  Ogden 3  Fisher 628 

Haslem  v.  Pittsburgh  Plate  Glass  Co .  .71  O.  G 27 

Hatch  v.  Moffitt 15  F.  R 4,  30 

Hatch  Storage  Battery  Co.  v.  Elec- 
tric Storage  Battery  Co 100  F.  R 761 


CI]  TABLE    t)l     CITED    CASES 

Names  of  Cases,  Where  Reported.  Pages  in  this  book. 

Hatfield  v.  Smith 44  F.  R 357 

Hathaway  v.  Roach 2  Woodbury  &  Minot.602,  604,  605 

Hat  Pouncing  Machine  Co.  v.  Hedden.148  U.  S 44,  55 

I  hit-Sweat  Mfg.  Co.  v.  Porter 40  F.  It 366 

Hat-Sweat  Mfg.  Co.  v.  Sewing  Ma- 
chine Co 32  F.  R 767 

Hat-Sweat  Mfg.  Co.  v.  Waring 46  F.  R 366 

I  [ausknecht  v.  Claypool 1  Black 508,  556,  609 

Havana  Press  Drill  Co.  v.  Ashurst ...  148  111 469 

Havemeyer  v.  Randall 21  F.  R 304,  575 

Havens     v.     W.     R.     Ostrander     & 

Co 190  F.  R 485 

Hawes  v.  Antisdel 2  Bann.  &  Ard 93 

Hayden  v.  Oriental  Mills 15  F.  R 508 

Hayden  v.  Oriental  Mills 22  F.  R 550 

Hayes  v.  Bickelhoupt 23  F.  R 510,  562 

Hayes  v.  Dayton 8  F.  R 510 

Hayes  v.  Leton 5  F.  R 758 

Hayes-Young   Tie   Plate   Co.    v.   St. 

"  Louis  Transit  Co 137  F.  R 113,  177,  179,  519 

Hayward  v.  Andrews 12  F.  R 334 

Hayward  v.  Andrews 106  U.  S 357,  481,  678 

Hazelip  v.  Richardson 10  O.  G 153 

H.  C.  Cook  Co.  v.  Beecher 217  U.  S 467 

H.  C.  Cook  Co.  v.  Little  River  Mfg. 

Co 156  F.  R 700 

Head  v.  Porter 70  F.  R 701 

Heald  v.  Rice 104  U.  S 47 

Heap  v.  Borchers 108  F.  R 677 

Heath  v.  Hildreth 1  McArthur's  Patent  Cases.  .22,  87, 

175 
Heaton  Button-Fastener  Co.  v.  Mac- 
Donald 57  F.  R 805 

Heaton-Peninsular  Button-Fastener 

Co.  v.  Eureka  Specialty  Co 77  F.  R 193,  362,  494 

Heaton-Peninsular     Button-Fastener 

Co.  v.  Schlochtmeyer 69  F.  R 643 

Heckers  v.  Fowler 2  Wallace.  .555,  556,  599,  600,  607 

Heekin  Co.  v.  Baker 138  F.  R 37,  57,  493 

Heide  v.  Panoulias 188  F.  R 596 

Helm  v.  First  National  Bank 43  Ind 190 

Hemolin   Co.    v,    Harway    Dyewood 

Extract  Co 166  F.  R 811 


TABLE    OF   CITED    CASES  t'lii 

Names  of  Cases.  Where  Reported.  Pages  in  thia  book 

Hemolin  Co.  v.  Harway,  etc.,  Mfg. 

Co 138  F.  R 217,  218 

Henderson  v.  Stove  Co 2  Bann.  &  Ard 242,  481 

Hendrie  v.  Sayles 98  U.  S 211,  323,  336,  345 

Hendy  v.  Iron  Works 127  U.  S 40,  51 

Hennebique     Construction     Co.     v. 

Myers 172  F.  R 204 

Henry  v.  Dick  Co 224  U.  S 385 

Henry  v.  Stove  Co 2  Bann.  &  Ard 481 

Henry  v.  Soapstone  Co 5  Bann.  &  Ard 118,  147 

Henry  v.  Tool  Co 3  Bann.  &  Ard 200 

Henry'  v.  United  States 22  Court  of  Claims 530,  531 

Henzel      v.       California      Electrical 

Works 51  F.  R 787 

Herbert  v.  Butler 97  U.  S 609 

Herbert  v.  Jolly 5  La 647 

Herman  v.  Youngstown  Car  Mfg.  Co. .  216  F.  R 810,  812,  818 

Herman  v.  Youngstown  Car  Mfg.  Co. .  191  F.  R 54,  185,  277,  450 

Herring  v.  Gage 3  Bann.  &  Ard 806,  807 

Herring  v.  Nelson 3  Bann.  &  Ard 302 

Hess-Bright    Mfg.    Co.    v.    Standard 

Roller  Bearing  Mfg.  Co 171  F.  R 123 

Hess-Bright    Mfg.    Co.    v.    Standard 

Roller  Bearing  Mfg.  Co 177  F.  R 72 

Hestonville  M.  &  F.  Passenger  Ry. 

Co.  v.  McDuffee 185  F.  R 179 

Heulings  v.  Reid 58  F.  R 65 

Hewett  v.  Swift 3  Allen  (Mass.) 506 

Hiatt  v.  Twomey 1  Devereaux  &  Battle's  Equity 

Cas.  (N.  C.) 342 

Hicks  v.  Kelsey 18  Wallace 31 

Hide-Ite  Leather  Co.  v.  Fiber  Prod- 
ucts Co 226  F.  R 223 

Higby  v.  Rubber  Co 18  F.  R 798 

Hildreth  v.  Auerbach 200  F.  R 325 

Hildreth  v.  Curtis  &  Son  Co 157  F.  R 76Q 

Hill  v.  Biddle 27  F.  R 272 

Hill  v.  Dunklee 1  McArthur's  Patent  Cases.  ...     88 

Hill  v.  Hodge 12  App.  D.  C 134,  172,  173 

Hill  v.  Smith 32  F.  R 728 

Hill  v.  Thuermer 13  Indiana 328 

Hill  c.  Whitcomb 1  Holmes 357 

Hill  v.  Wooster 132  U.  S 21,  160 


CIV  TABLE    OF   CITED   CASES 

Names  of  <  W  here  Reported.  Pagei  in  thia  l  ><  ><  -K . 

Millard  v.  Fisher  I i< >« »k  Tj  pewriter<  '<>.  !•")'.»  P.  U 83 

Hillborn  v.  Hale  A  Kilburn  Mfg.  Cq  69  F.  R 64,  227,  258 

llimclv  r.  Hose 5  Cranch I'M) 

Hipp  v.  Babio 19  Howard 7:57 

Hisey  p.  Peters 71  ().  (! L66,   172,  173 

Hitchcock  v.  Tremaine 9  Blotch ls.\ 

Hitchcock  v.  Tremaine I  Fisher '_'  12 

Hitchcock  r.  Tremaine 5  Fisher 724 

II.  J.  Heinz  Co.  v.  Cohn 207  F.  R 41,  55,  96,  1 17 

Hobbie  ».  Jennison 149  U.  S 348 

Hobbie  v.  Smith 27  F.  11 94,  014,  622 

1  [obbs  r.  Beach 180  U.  S 104,  204,  281 

Hocket/.N.Y.C.&H.  H.  It.  Co 122  F.  It 4 

Hockholzer  v.  Eager 2  Sawyer 769,  770 

Hodge   v.    North    Missouri    Railroad 

Co 1  Dillon 352 

Hodge  v.  Railroad  Co 6  Blatch 321,  749,  708,  773 

Hodge  v.  Railroad  Cos 4  Fisher 482 

Hoe  v.  Boston  Daily  Advertiser 14  F.  R 774 

Hoe  v.  Kahler 12  F.  R 141 

Hoe  v.  Knap 27  F.  R 222,  775 

Hoe  v.  Scott 87  F.  R 834 

Hoeltge  v.  Hoeller 2  Bond 401 

Hoff  v.  Iron  Clad  Mfg.  Co 139  U.  S 31 

Hoffheins  v.  Brandt. 3  Fisher 306 

Hogan  v.  Westmoreland  Specialty  Co .  163  F.  R 32 

Hogg  v.  Emerson 11  Howard 230,  240,  596 

Hogg  v.  Gimbel 94  F.  R   632 

Hohorst  v.  Howard 37  F.  R 676 

Holbrook  v.  Small 3  Bann.  &  Ard 631 

Holden  v.  Curtis 2  New  Hampshire 328,  338 

Holiday  v.  Mattheson 24  F.  R 361 

Hollida  v.  Hunt 70  111 190 

Holliday  v.  Pickhardt 12  F.  R 759 

Holliday  v.  Pickhardt 29  F.  R 252,  399 

Hollister  v.  Benedict  Mfg.  Co 113  U.  S 21,  23,  27,  55 

Holloway  v.  Dow 54  F.  R 135,  221,  557 

Holmes  v.  Truman 07  F.  R 566,  595,  623 

Holmes  Alann  Tel.  Co.  v.  Telephone 

Co 42  F.  R 41,  205 

Holmes,  Booth  &  Haydens  v.  McGill.  .  108  F.  R 366 

Holmes  Potective  Co.  v.  Alann  Co.  .  .21  F.  R 206 

Holmes  Protective  Co.  v.  Alarm  Co.  .31  F.  R 765 


TABLE    OF    CITED    CASES  CV 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Horman  Patent  Mfg.  Co.  v.  Railroad 

Co 15  Blatch 510 

Horn  v.  Detroit  Co 150  U.  S 657 

Horn  v.  Pere  Marquette  R.  Co 151  F.  R 781 

Hoskin  v.  Fisher 125  U.  S 295,  300,  582 

Hotchkiss  v.  Greenwood 11  Howard 31 

Hotchkiss  v.  Greenwood 4  McLean 65 

Hotchkiss  v.  Oliver 5  Denio  (N.  Y.) 536 

Hotchkiss  v.  Wooden  Ware  Co 53  F.  R 411,  412,  413,  414 

Hotel  Security  Checking  Co.  v.  Lor- 
raine Co 160  F.  R 5 

Houser  v.  Starr 203  F.  R 41,  238,  277 

Houston  Ry.  Co.  v.  Stern 74  F.  R 616 

Howard  v.  Hey 18  App.  D.  C 156 

Howard  v.  Mast 33  F.  R 798 

Howard   v.   Stillwell   &    Bierce   Mfg. 

Co 139  U.  S 592 

Howard  v.  St.  Paul  Plow-Works 35  F.  R 93,  501 

Howe  v.  Morton 1  Fisher 763,  773,  774,  775 

Howe  v.  Russell 36  Maine 840 

Howe  v.  WiUiams 2  Cliff 423 

Howe  Machine  Co.  v.  National  Needle 

Co 134  U.  S 51,  53,  238,  240,  252 

Howe  Machine  Co.  v.  Needle  Co 12  F.  R 53 

Howes  v.  McNeal 3  Bann.  &  Ard 109,  177 

Howes  v.  McNeal 5  Bann.  &  Ard 75 

Hoyt  v.  Computing  Scale  Co 96  F.  R 415 

H.   S.    Earle   Mfg.    Co.    v.   Clark   & 

Parsons  Co 154  F.  R 97 

H.  T.  Slemmer's  Appeal 58  Penn 64 

HubbeU  v.  De  Land 14  F.  R 653 

Hubbell  v.  United  States 171  U.  S 543 

Hubbell  v.  United  States 179  U.  S 255,  434 

Hubel  v.  Dick 28  F.  R 87,  399,  439,  447 

Hubel  v.  Tucker 24  F.  R 173 

Huber  v.  Nelson  Mfg.  Co 148  U.  S 207,  292 

Huber  v.  Sanitary  Depot 34  F.  R 485,  510 

Hudson  v.  Draper 4  Fisher 564 

Huebel  v.  Barnard 90  O.  G 64 

Hulett  v.  Long 15  App.  D.  C 535 

Hulett  v.  Long 89  O.  G 169,  172 

Hull  v.  Commissioner  of  Patents .  .  .  .  7  O.  G 150,  160 

Hulse  v.  Bonsack  Mach.  Co 65  F.  R 331,  344 


c\i  TABLE   OF   CITED   casks 

Names  of  Cases.  Where  Reported,  Pages  in  this  book. 

Humphreys  v.  Douglas 10  Vermont 488 

Hunnicutt  v.  Peyton 102  U.  S 012 

Hunt  v.  Garsed 51  F.  R 49 

Hunt    Bros.    Fruit    Packing    Co.    v. 

Cassidy 63  F.  R.  .59,  94,  436,  557,  616,  621, 

083,  085 

Hunter  v.  Stikeman 13  App.  D.  C 107,  109 

Huntington  v.  Heel  Plate  Co 33  F.  R 778 

Huntington     Dry-Pulverizer    Co.    v. 

Alpha  Portland  Cement  Co 91  F.  R 775 

Huntington     Dry-Pulverizer    Co.    v. 

Newell  Universal  Mill  Co 109  F.  R 118 

Huntington    Dry    Pulverizer    Co.    v. 

Virginia-Carolina  Chemical  Co.  .  121  F.  R 768 

Huntington    Dry    Pulverizer    Co.    v. 

Virginia-Carolina  Chemical  Co.  .  130  F.  R 674,  675,  070 

Huntington    Dry    Pulverizer    Co.    v. 

Whittaker  Cement  Co 89  F.  R 432 

Hupfield  v.  Automaton  Piano  Co 66  F.  R 469,  487 

Hurd  v.  James  Goold  Co 203  F.  R 486,  794 

Hurd  v.  Seim 189  F.  R 710 

Hurd  v.  Snow 35  F.  R 35 

Hurd  v.  Woodward  Co 190  F.  R 794 

Hurlbut  v.  Schillinger 130  U.  S 269,  819 

Hurwood  Mfg.  Co.  v.  Wood 138  F.  R 254,  549 

Hussey  v.  Whitely 2  Fisher 778 

Hutter  v.  DeQ  Bottle  Stopper  Co. ...  128  F.  R 454,  501,  762 

Hyde    v.    Minerals    Separation    Co., 

Ltd 214  F.  R 34,  56,  73 


Ide  v.  Engine  Co 31  F.  R 791 

Ide    v.    Trorlicht,    Duncker   &   Re- 

nard  Carpet  Co 115  F.  R 231,  300,  453,  601 

Idealite  Co.  v.  Protection  Light  Co.  .  103  F.  R 292 

Ideal  Stopper  Co.  v.  Crown  Cork  & 

Seal  Co 131  F.  R 57,  73 

lllingworth  v.  Atha 42  F.  R 157,  158 

Illinois  Central  R.  R.  Co.  v.  Turrill.  .  110  U.  S 821 

Illinois    Steel    Co.    v.    Kilmer    Mfg. 

Co 70  F.  R 589 

Imhaeuser  v.  Buerk 101  U.  S 82,  435,  439 


TABLE   OF    CITED    CASES  CVli 

Names  of  Cases.  Where  Reported.  Pages  in  this  honk. 

Imperial  Brass  Mfg.  Co.  v.  Nelson .  .  .  194  F.  R 90 

Imperial     Chemical     Mfg.     Co.     v. 

Stein 69  F.  R 495 

Imperial     Chemical     Mfg.     Co.     v. 

Stein 77  F.  R 681 

Independent  Baking  Powder  Co.   v. 

Boorman 130  F.  R 673 

India  Rubber  Comb  Co.  v.  Phelps ...  4  Fisher 723 

Indiana  Novelty  Mfg.  Co.  v.  Crocker 

Chair  Co 103  F.  R 53,  246 

Indianapolis    &    St.    Louis    Railroad 

Co.  v.  Horst 93  U.  S 611 

Individual     Drinking     Cup     Co.     v. 

Osmun-Cook  Co 220  F.  R 325 

Individual     Drinking     Cup     Co.     v. 

Public  Service  Cup  Co 234  F.  R 654 

Indurated  Fibre  Co.  v.  Grace 52  F.  R 644,  685 

Ingalls  v.  Tice 14  F.  R 484 

Ingersoll  v.  Holt ,  .  104  F.  R 157,  159,  283 

Ingcrsoll  v.  Jewett 16  Blatch 546 

Ingersoll  v.  Musgrove 3  Bann.  &  Ard 623 

In  re  Barrett 14  App.  D.  C 154 

In  re  Beckwith 203  F.  R 829 

In  re  Beswick 16  App.  D.  C 156 

In  re  Chicago  Sugar-Refining  Co ...  .87  F.  R 739 

In  re  Chinnock 21  D.  C 154 

In  re  Corbin  and  Martlett 1  McArthur's  Patent  Cases.  .  .  .  100 

In  re  Dann 129  F.  R 350 

In  re  Drawbaugh 66  O.  G 155 

In  re  Drawbaugh *. 67  O.  G 113 

In  re  Frasch 20  App.  D.  C 152,  154,  156 

In  re  Fullagan 32  App.  D.  C 154 

In  re  Gamewell  Fire-Alarm  Tel.  Co.  .73  F.  R 725 

In  re  Haberman  Mfg.  Co 147  U.  S 782,  789 

In  re  Hebard 1  McArthur's  Patent  Cases.  .46,  437 

In  re  Hein 166  U.  S 154 

In  re  Hemiup 3  Paige  (N.  Y.) 839,  840 

In  re  Henris 125  F.  R 798 

In  re  Hoeveler  &  McTighe 21  D.  C.  Rep 154 

In  re  Hohorst 150  U.  S 401,  407,  469 

In  re  Keasbey  &  Mattison  Co 160  U.  S 469 

In  re  Kemper 1  McArthur's  Patent  Cases     .  2 

In  re  Lennon 166  U.  S 781 


0V1U  TABLE   OK   CITED   CASES 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

In  re  Maynard 1  McArthur's  Patent  Cases.  ...     31 

In  re  Messenger 12  App.  D.  C 154 

In  iv  Mond 16  App.  D.  C 37 

In  re  Mower 15  App.  D.  C 110 

In  re  Potta 166  U.  S 729 

In  re  Schaeffer 2  App.  D.  C 74 

In  re  Seely 1  McArthur's  Patent  Cases.  ...     22 

In  re  Snyder 10  App.  D.  C 21 

In  re  Steiner 195  F.  R 638 

In  re  Stern 215  F.  R 802 

In  re  Swinburne 19  App.  D.  C 123 

Insurance  Co.  v.  Egglcston 96  U.  S 370 

Insurance  Co.  v.  Lanier 95  U.  S 609 

Insurance  Co.  v.  Sea 21  Wallace 598,  599 

Interior  Construction  Co.  v.  Gibney .  .  160  U.  S 476 

International  Curtis  Marine  Turbine 

Co.  v.  Wm.  Cramp  &  Sons,  etc., 

Co 202  F.  R 197 

International  Curtis  Marine  Turbine 

Co.  v.  Wm.  Cramp  &  Sons,  etc., 

Co 211  F.  R 478 

International  Curtis  Marine  Turbine 

Co.  v.  Wm.  Cramp  &  Sons,  etc., 

Co 232  F.  R 197 

International     Mausoleum     Co.     v. 

Sievert 213  F.  R 15,  16,  39,  653 

International  Pavement  Co.  v.  Rich- 
ardson  75  F.  R 360 

International   Postal   Supply   Co.   v. 

Bruce 114  F.  R 195 

International  Tel.  Mfg.  Co.  v.  Kellogg 

S.  B.  &S.  Co 171  F.  R 108,  115 

International    Terra    Cotta    Lumber 

Co.  v.  Maurer 44  F.  R.  . .  .304,  558,  575,  643,  692 

International  Time  Recording  Co.  v. 

W.   H.   Bundy  Time  Recording 

Co 159  F.  R 463 

International    Tooth-Crown    Co.    v. 

Bennett 72  F.  R 561 

International    Tooth-Crown    Co.    v. 

Carmichael 44  F.  R 649,  650 

International   Tooth    Crown    Co.    v. 

Gaylord 140  U.  S 114,  119 


TABLE    OF    CITED    CASES  cix 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

International    Tooth    Crown    Co.    v. 

Hanks  Dental  Assn Ill  F.  R 594 

International   Tooth   Crown    Co.    v. 

Richmond 30  F.  R 113,  177 

International    Wireless    Tel.    Co.    v. 

Fessenden 131  F.  R 679 

Interurban   Ry.   &   Terminal   Co.   v. 

Westinghouse    Electric    &    Mfg. 

Co 186  F.  R.  .  ..74,  127,  753,  784,  789 

Iowa  Barb  Steel  Wire  Co.  v.  Barbed 

Wire  Co 30  F.  R 800 

Irving-Pitt    Mfg.   Co.   v.    Twinlock. 

Co 220  F.  R 498,  778 

Irwin  v.  McRoberts 4  Bann.  &  Ard 774 

Isaacs  v.  Cooper 4  Washington 757 

Ives  v.  Hamilton 92  U.  S 454 


Jackes-Evans  Mfg.   Co.   v.  Hemp  & 

Co 140  F.  R 652 

Jackson  v.  Allen 120  Mass 368 

Jackson  v.  Getz 16  App.  D.  C 170 

Jackson  v.  Nagle 47  F.  R 497 

Jackson  v.  Vaughan 73  F.  R 348 

Jackson     v.     Western     Fireproofing 

Co 112  F.  R 595 

Jackson  Fence  Co.  v.  Peerless  Wire 

Fence  Co 228  F.  R 231 

Jackson,  Inc.,  George  W..  v.  Friestedt, 

etc.,  Bar  Co 159  F.  R 701 

Jackson  Skirt  &  Novelty  Co.  v.  Rosen- 

baum 225  F.  R 56 

Jacob  v.  United  States 1  Brockenbrough 415 

Jacobs  v.  Baker 7  Wallace 16 

Jacobs  v.  Hamilton  County 4  Fisher; 487 

Jacobson  v.  Alpi 46  F.  R 766 

James  v.  Campbell 104  U.  S 185,  194,  292,  582 

James  E.  Tompkins  Co.  v.  New  York 

Woven  Wire  Mattress  Co 159  F.  R 217 

James  Heekin  Co.  v.  Baker 138  F.  R 37,  493 

Janney  v.  Pancoast,  etc.,  Co 124  F.  R 502 


CX  TABLE    OF    CITED    CASKS 

Name   o   I                                                      Wtere  Reported.             Pagi    in  thi    book. 
Jaroa  Underwear  Co.  v.  Fleece  Under- 
wear Co 60  F.  R      357,  512 

Jefferson  Electric,  etc.,  Co.  v.  West- 

inghouse,  etc.,  Co 134  F.  R 762 

Jenkins  v.  < Ireenwald 1  Bond SOS 

Jenkins  v.  Greenw.ald 2  Fisher 7i>:;,  787 

Jenkins  v.  Ruberg 39  F.  It 763 

Jenkins  v.  Stetson 32  F.  R 288,  303 

Jenner  v.  Brown 139  F.  R 114,  122 

Jennings  v.  Dolan 29  F.  R 492,  836 

Jennings  v.  Kibbe 10  F.  R 562 

Jennings  v.  Kibbe    24  F.  R 94 

Jennings     v.    Rogers    Silver    Plate. 

Co 118  F.  R 836 

Jennisons  v..  Leonard 21  Wallace 598 

Jewel]  v.  City  of  Philadelphia 180  F.  R 497 

Jewetl  v.  At  wood  Suspender  Co 100  F.  R 193,  326,  351 

J.  J.  Warner  Co.  v.  Rosenblatt 80  F.  R 58,  557 

J.  L.  Mott  Iron  Works  v.  Cassidy.  .  .31  F.  R 31 

.J.  L.  Mott  Iron  Works  v.  Standard 

Mfg.  Co 53  F.  R 256 

J.  L.  Owens  Co.  v.  Twin  City  Separa- 
tor Co 168  F.  R 134,  215,  454,  601 

John  Crossley  &  Sons  v.  Hogg 83  F.  R 71 

John  Kitchen,  Jr.,  Co.  v.  Levison ....  188  F.  R 292 

John  R.  Williams  Co.  v.  Miller,  Du 

Brul  &  Peters  Co 107  F.  R 165,  173,  494 

John  R.  Williams  Co.  v.  Miller,  Du 

Brul  &  Peters  Mfg.  Co 108  F.  R 204 

John  R.  Williams  Co.  v.  Miller,  Du 

Brul  &  Peters  Mfg.  Co 115  F.  R 204 

Johnsen  v.  Fassman 1  Woods 109 

Johnson  v.  Brooklyn  Co 37  F.  R 795 

Johnson  v.  Foos  Mfg.  Co 141  F.  R 495,  788 

Johnson  v.  Johnston 60  F.  R 15 

Johnson  v.  Lambert 234  F.  R 57 

Johnson  v.  McCullough 4  Fisher 75,  315 

Johnson  v.  Mueser 212  U.  S 176 

Johnson  v.  Olsen 61  F.  R 254 

Johnson  v.  Root 2  Cliff 595,  596 

Johnson  v.  Root 1  Fisher 564 

Johnson  v.  Railroad  Co 33  F.  R 82 

Johnson  v.  Railroad  Co 105  U.  S 205,  303 


TABLE    OF   CITED    CASES  CXJ 

Names  of  Cases.  Where  Reported,  Pages  in  this  book. 

Johnson  Co.  v.  Steel  Co 67  F.  R :!0 

Johnson     Co.     v.     Toledo     Traction 

Co 119  F.  R 53 

Johnson     Furnace    Co.    v.     Western 

Furnace  Co 178  F.  R 255,  344,  424,  548 

Johnson  Signal  Co.   V.   Union  Signal 

Co 59  F.  R 326 

Johnson  Signal  Co.  v.  Union  Switch 

&  Signal  Co 55  F.  R 359 

Johns-Pratt  Co.  v.  Sachs  Co 175  F.  R 549 

Johnston  v.  Mining  Co 148  U.  S 681 

Johnston  v.  Southern  Well  Works. .  .  .208  F.  R 561 

John  Woods  &  Sons  v.  Carl 203  U.  S 191 

Jolliffe  v.  Collins 21  Missouri 343 

Jonathan  Mills  Mfg.   Co.  v.  White- 
hurst 56  F.  R 327 

Jonathan  Mills  Mfg.   Co.   v.   White- 
hurst  60  F.  R 723 

Jonathan  Mills  Mfg.   Co.  v.   White- 
hurst 72  F.  R 339 

Jones  v.  Bank 5  How.  (Miss.) 778 

Jones  v.  Barker 11  F.  R 114,  248 

Jones  v.  Berger 58  F.  R 334,  364,  365,  695 

Jones  v.  Buckell 104  U.  S 610 

Jones  v.  Cyphers 126  F.  R 542 

Jones  v.  Morehead 1  Wallace 735 

Jones  v.  Reynolds 120  N.  Y 326 

Jones  v.  Wetherell 1  McArthur's  Patent  Cases.  .  .  .    175 

Jones  Co.  v.  Munger  Co 49  F.  R 441 

Jordan  v.  Dayton 4  Ohio 193 

Jordan  v.  Dobson 2  Abbott's  U.  S.  Reports.  .310,  311, 

319,  785 

Jordan  v.  Dobson 4  Fisher 302 

Jo.slin      v.      Northern      Pacific      Ry. 

Co .55  F.  R 447 

J.  Stevens  Arms  &  Tool  Co.  v.  Daven- 
port  134  F.  R 44 

Judson  v.  Bradford 3  Bann.  &  Ard 616,  620 

Judson  v.  Cook 11  Barbour  (N.  Y.) 490 

Judson    L.    Thomson    Mfg.    Co.    v. 

Hatheway 41  F.  R 763 

Julius  King  Co.  v.  Bilhoefer 124  F.  R 55 

Justi  v.  Clark 108  F.  R 292 


CXU  TAI3LK    OK    CITKD    CASKS 


Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

ECaaps  v.  Eartung 23  F.  It 49 

Kahn  v.  Starrells 135  F.  It 4 

Kahn  v.  Starrells 136  F.  R 738 

kaiser  r.  General  Phonograph  Supply 

Co 171  F.  R 480 

Karfiol  v.  Rothner 151  F.  R 773 

Kearney  v.  Railroad  Co 27  F.  R 326 

Kearney  v.  Railroad  Co 32  F.  It 87 

Keasby   &    Mattison    Co.    v.    Carey 

Mfg.  Co 139  F.  R 58,  165 

Keasbey  &   Mattison   Co.   v.   Philip 

Carey  Mfg.  Co 110  F.  R 756 

Keeler  v.  Folding  Bed  Co 157  U.  S 348 

Keene  v.  New  Idea  Spreader  Co 231  F.  R 56,  59,  71 

Keep  v.  Fuller 42  F.  R 840 

Keith  v.  Engineering  Co 136  Cal 335 

Keller  v.  Strauss 88  F.  R 645 

Kelley  v,  Ypsilanti  Dress-Stay  Co. ...  44  F.  R 648,  791 

Kellogg  Switchboard  Co.  v.  Interna- 
tional Tel.  Mfg.  Co 158  F.  R 106 

Kellogg    Switchboard    Co.    v.    Dean 

Electric  Co 182  F.  R 218 

Kellogg    Toasted    Cornflake    Co.    v. 

Buck 208  F.  R 397 

Kelly  v.  Clow 89  F.  R 256 

Kelly  v.  Fynn 16  App.  D.  C 168 

Kelly  v.  Springfield  Ry.  Co 83  F.  R 602 

Kelsey  Heating  Co.  v.  James  Spear 

Co 155  F.  R 435 

Kendall  v.  Winsor 21  Howard.  106,  107,  108,  126,  189 

Kendrick  v.  Emmons 2  Bann.  &  Ard 218 

Kendrick  v.  Emmons 3  Bann.  &  Ard 437 

Kennedy  v.  Hazelton 128  U.  S 60,  345 

Kennedy  v.  Penn.  Iron  &  Coal  Co .  .  .67  F.  R 773 

Kennedy  v.  Solar  Refining  Co 69  F.  R 421 

Kennicott  Co.   v.  Holt  Ice  &  Cold 

Storage  Co 230  F.  R 103,  219,  226 

Kennicott    Water    Softener    Co.    v. 

Bain 185  F.  R 787 

Kenny  Mfg.  Co.  v.  J.  L.  Mott  Iron 

Works 137  F.  R 135 


TABLE    OF   CITED    CASES  cxii'i 

Names  of  Cases.  Where  Reported.  Pages  in  thia  book. 

Kenrick  v.  United  States 1  Gallison 415 

Keplinger  v.  De  Young 10  Wheaton Ci] 

Kerosene  Lamp  Heater  Co.  v.  Fisher. 5  Bann.  &  Ard 832 

Kerosene  Lamp  Heater  Co.  v.  Littell.3  Bann.  &  Ard .    303 

Kessler  v.  Eldred 206  U.  S 7'M 

Ketchum  Harvester  Co.   v.  Johnson 

Harvester  Co 8  F.  R 624 

Keyes  v.  Eureka  Mining  Co 158  U.  S 376 

Keyes  v.  Grant 118  U.  S 593 

Keyes  v.  Mining  Co 158  U.  S 585,  677 

Keyes  v.  Refining  Co 31  F.  II 758,  707.  769 

Keyes  v.  Refining  Co 43  F.  R (119 

Keystone  Bridge  Co.  v.  Iron  Co 95  U.  S 239,  251 

Keystone  Mfg.  Co.  v.  Adams 151  U.  S 50,  55,  804,  813 

Keystone  Trading  Co.  v.  Zapota  Mfg. 

Co 210  U.  S 400,  401 

Kidd  v.  Horry 28  F.  R 649 

Kidd  v.  Ransom 35  F.  R 707 

Kilbourne  v.  Bingham  Co 47  F.  R 31 

Kilburn  v.  Holmes 121  F.  R 357 

Killeen  v.  Buffalo  Furnace  Co 140  F.  R 88 

Kilmer  Mfg.  Co.  v.  Griswold 67  F.  R 720 

Kimberly  v.  Arms 129  U.  S 840 

King  v.  Anderson 90  F.  R 32 

King  v.  Gallun 109  U.  S 51 

Kings    County    Raisin,    etc.,    Co.    v. 

United  States  Consolidated  Co.  .  182  F.  R 75,  435 

Kinlock  Tel.  Co.  v.  Western  Electric 

Co 113  F.  R 441 

Kinnear  Mfg.  Co.  v.  Wilson 142  F.  R 107 

Kinnear    &    Gager    Co.    v.    Capital 

Sheet-Metal  Co 81  F.  R 83,  93 

Kinner  v.  Shepard 107  F.  R 623 

Kinsman  v.  Parkhurst 18  Howard 736 

Kirby  v.  Mfg.  Co 10  Blatch 302 

Kirby  Bung  Mfg.  Co.  v.  White 1  McCrary 762,  773,  774 

Kirchberger  v.  Am.  Acetylene  Co 124  F.  R 4,  80 

Kirchberger  r.  Am.  Acetylene  Co.  ...  128  F.  R 164,  223 

Kirk  v.  Commissioner  of  Patents        .  37  O.  G 157,  159,  179 

Kirk  v.  Du  Bois 28  F.  R 676,  701 

Kirk  v.  Du  Bois 33  F.  R 173 

Kisinger-Ison  Co.  v.   Bradford  Belt- 
ing Co 97  F.  R 571 


cxiv  TABLE   i  >r  CITED   C  \si:s 

x.iin. 'M  of  Cases.                                               Where  Reported.            Pages  in  this  book. 
Kiainger-Ison  ('<>.  '■.   Bradford   Belt- 
ing Co L23  F.  I! 72'.),  730,  812 

Kittle*  DeGraff  30  F.  II 676 

Kittle  v.  Hall 29  F.  R 681 

Kittle  v.  Hall 30  F.  R 272 

Kittle  v.  Rogers 33  F.  R 676 

Klander-Weldon  Dyeing  Mach.  Co. 

.  v.  Giles 212  F.  R 674 

Klein  v.  City  of  Seattle 77  F.  R 21 

Klein  v.  Russell 19  Wall.    .    102,  247,  248,  301,  593 

Knapp  v.  Morss 150  U.  S 137,  241,  446,  447 

Knapp  v.  Shaw 15  F.  R 715 

Knickerbocker  Co.  v.  Rogers 61  F.  R 83,  95,  218 

Knight  v.  Railroad  Co Taney's  Circuit  Court  Decisions  293, 

301 

Knox  v.  Loweree 1  Bann.  &  Ard 109 

Knox  v.  Quicksilver  Mining  Co 6  Sawyer 432,  807,  833 

Koalatype  Co.  v.  Hoke 30  F.  R 334 

Kokomo  Fence  Mach.  Co.  v.  Kitsel- 

man 189  U.  S 244,  445,  448 

Korn  v.  Wiebuseh 33  F.  R 656 

Kotten  v.  Knight. 137  F.  R 57 

Kraus  v.  Fitzpatrick 34  F.  R 80 

Krell  Auto  Grand  Piano  Co.  v.  Story 

&  Clark  Co 207  F.  R 39,  653 

Krementz  v.  Cottle  Co 148  U.  S 28,  55 

Krick  v.  Jansen 52  F.  R 684 

Kruttschnitt  v.  Simmons 118  F.  R 462 

Kryptok  Co.  v.  Stead  Lens  Co 190  F.  R 757,  784,  791 

Kryptok  Co.  v.  Stead  Lens  Co 207  F.  R 84,  239 

Kuhlman    Electric    Co.    v.    General 

Electric  Co 147  F.  R 219 

Kuhn  v.  Lock-Stub  Check  Co 165  F.  R 629 

Kursheedt  Mfg.  Co.  v.  Naday 103  F.  R 49 


Laas  v.  Scott 161  F.  R 172,  760 

La  Baw  v.  Hawkins 2  Bann.  &  Ard.  .614,  619,  812,  818 

LaCrosse      Plough      Co.      v.      Van 

Brunt 220  F.  R 809 

Ladd  v.  Cameron 25  F.  R 765 


TABLE    OF    CITED    (ASKS  rX\ 

Names  of  Cases.  Where  Reported.  Pagos  in  thi 

Lafferty  Mfg.  Co.  v.  Acme  R'y  Signal 

&  Mfg.  Co L38  F.  R :;i 

Lake  Shore  R.  R.  Co.  v.  Car  Brake 

Shoe  Co 110  U.  S    237 

Lalance  &  Grosjean  Mfg.  Co.  v.  Ila- 

berman  Mfg.  Co 53  F.  R c_>l' 

Lalance  &  Grosjean  Mfg.  Co.  v.  Ila- 

berman  Mfg.  Co 55  F.  R 215 

Lalance  &  Grosjean  Mfg.  Co.  v.  Il.-i- 

berman  Mfg.  Co 87  1'.  R 564 

Lalance  &  Grosjean  Mfg.  Co.  v.  Ha- 

bennan  Mfg.  Co 93  F.  R 354,  587 

Lalance  &  Grosjean  Mfg.  Co.  v.  11a- 

berman  Mfg.  Co 107  F.  R 354 

Lalance  &  Grosjean  Mfg.  Co.  v.  Mo- 

sheim 48  F.  R 684 

Lalance  &  Grosjean  Mfg.  Co.  v.  Na- 
tional Enameling  Co 108  F.  R 354 

Lambert     Snyder     Vibrator    Co.     v. 

Marvel  Vibrator  Co 13S  F.  R 7.",  \ 

Lamb  Knit  Goods  Co.  v.  Lamb  Glove 

&  Mitten  Co 120  F.  R 21,  224,  735 

Lamson  Cash  Register  Co.   v.   Kep- 

linger 45  F.  R 248 

Lamson   Consolidated    Store   Service 

Co.  v.  Hillman 123  F.  R 226,  447 

Lamson   Consolidated   Store   Service 

Co.  v.  Siegel-Cooper  Co 106  F.  R 683 

Lane  v.  Levi 104  O.  G 759 

Lane  v.  Welds 99  F.  R 457,  543 

Lane  &  Bodley  Co.  v.  Locke 150  U.  S 375,  380,  680 

Lange  v.  McGuin 177  F.  R 652 

Lanyon  Zinc  Co.  v.  Brown 115  F.  R 559 

Lapham  Dodge  Co.  v.  Severin 40  F.  R 257 

La  Rue  v.  Electric  Co 31  F.  R 103 

Lavigne   Mfg.    Co.    v.    .John    F.    Mc- 

Canna  Co 194  F.  R 50 

Lawther  v.  Hamilton 64  F.  R 804,  821 

Lawther  v.  Hamilton 124  U.  S 45 

Lay  v.  Indianapolis  Brush  &  Broom 

Mfg.  Co 120  F.  R 180 

Leach  v.  Chandler 18  F.  R 399 

Leadam  v.  Ringgold 140  F.  R 700 


CXV1  TABLE    OF    CITED    CASES 

Names  <>f  Cues.  Where  Reported.  Pages  in  this  book. 

Leake  v.  GUchrist 2  Devereau*  (N.  C.) 483 

Leather    <  rrflle    &    1  >rapery    ( '<>.    v. 

( ihristopherson             182  F.  R 549 

LeBrocqw.Childs 158  F.  R 517 

Lederer  v.  Garage  Equipment  Co.       235  F.  R 721 

Lee  v.  Bland  v 2  Fisher 5G0 

Lee  v.  Upson  &  Bart  Co 42  I '.  R 30 

Lee  v.  Upson  &  Hart  Co 43  F.  R 94 

Leeds    &    Catlin    v.    Victor    Talking 

Machine  Co 213  U.  S.     .206,  208,  226,  495,  751 

L.  E.  Waterman  Co.  v.   Parker  Pen 

Co 100  F.  R 474,  476 

L.  E.  Waterman  Co.  v.  Parker  Pen 

Co 107  F.  R 731 

Leffingwell  v.  Warren 2  Black 508 

Leggett  v.  Avery 101  U.  S 107,  582 

Leggett  v.  Standard  Oil  Co 149  U.  S 27,  295 

Lehigh  Valley  Railroad  Co.  v.  Kear- 
ney.  158  U.  S 137,  241 

Lehnbeuter  v.  Holthaus 105  U.  S 103 

Lenox  v.  Roberts 2  Wheaton 481 

Leonard  v.  Lovell 29  F.  R 84 

Le  Page  Co.  v.  Russia  Cement  Co ....  51  F.  R 522 

Le  Roy  v.  Tatham 14  Howard 221 

Leslie  v.  William  Mann  Co 157  F.  R 471 

Letson  v.  Alaska  Packers  Assn 130  F.  R 454 

Lettelier  v.  Mann 91  F.  R 51 

Levy  v.  Dattlebaum 63  F.  R 335 

Levy  v.  Harris 124  F.  R 313,  434,  442 

Levy  v.  Harris 130  F.  R 433,  442 

Lewis  v.  Johns 34  California 491 

Lewis    Blind-Stitch   Co.    v.    Arbetter 

Felling  Mach.  Co 208  F.  R 254 

Lewis  Blind-Stitch  Co.   v.   Premium 

Mfg.  Co 163  F.  R 442 

Lewis  Construction  Co.  v.  Semple.  .  .  177  F.  R 51 

Lexington   &    Ohio   Railroad   Co.    v. 

Applegate 8  Dana  (Ken.) 782 

L.  H.  Gilmer  Co.  v.  Geisel 168  F.  R 681 

Library  Bureau  v.  Yawman  &  Erbe 

Mfg.  Co 147  F.  R 734 

Lichenstein  v.  Phipps 167  F.  R 561 

Lichenstein  v.  Strauss 166  F.  R 632 


TABLE    OF   CITED    CASES  CXVii 

Names  of  Cases.  Where  Reported.  m  thia  book. 

Liddle  v.  Cory 7  Blatch 798,  799 

Lidgerwood    Mfg.    Co.    v.    Lambert 

Hoisting  Co 150  F.  R 435 

Lightner  v.  Railroad  Co 1  Lowell 374 

Ligowski   Clay-Pigeon   Co.   v.   Clay- 
Bird  Co 34  F.  R. .  178, 180,  231,  435,  601,  683 

Lilliendahl  v.  Detweller 18  F.  R 511 

Lincoln  v.  Power 151  U.  S 595 

Lincoln    Iron    Works    v.    McWhirter 

Co 142  F.  R 91 

Lindemeyer  v.  Hoffman 18  App.  D.  C 169 

Lindsay  v.  Stein 10  F.  R 180 

Lion  Tractor  Co.  v.  Bull  Tractor  Co.  .231  F.  R 331,  332,  744,  784 

Little  v.  Downing 37  New  Hampshire 583 

Littlefield  v.  Perry 21  Wallace.  .298,  326,  331,  343,  346, 

347,  485,  486,  638 

Livingston  v.  Jones 1  Fisher 563 

Livingston  v.  Woodworth 15  Howard 804 

Lloyd  v.  Antisdel 95  O.  G 62 

Locke  v.  Boch 17  App.  D.  C 168 

Locke  v.  Lane  Co 35  F.  R 578 

Lock  Joint  Pipe  Co.  v.  Melber 234  F.  R 325,  375 

Lockwood  v.  Cleveland 6  F.  R 401 

Locomotive  Truck    Co.    v.    Railroad 

Co 2  F.  R 631,  637,  807,  825 

Locomotive   Truck   Co.    v.    Railway 

Co 10  Blatch 512 

Loercher  v.  Crandall 11  F.  R 437 

Loew  Filter  Co.  v.  German-American 

Filter  Co 107  F.  R 494 

Loew  Filter  Co.  v.  German-American 

Filter  Co 164  F.  R 72 

Loewer  v.  Ford 55  F.  R 54 

London  v.  Everett  H.  Dunbar  Cor- 
poration   179  F.  R 411,  413,  414 

Long  v.  Pope  Mfg.  Co 75  F.  R 453 

Loom  Co.  v.  Higgins 105  U.  S . .  28,  87,  215,  259,  260,  537, 

580 

Loomis  v.  Hauser 99  O.  G 171 

Loomis  v.  Loomis 26  Vermont 338 

Loomis-Manning  Filter  Co.  v.  Man- 
hattan Filter  Co 117  F.  R 501,  503 

Lord  v.  Machine  Co 24  F.  R 679 


(Will  TABLE    OF    TITED    CASES 

Names  of  Ca  Where  Reported.  Paget  in  this  book. 

Loring  v.  Booth 52  F.  H 770 

Los  A  Limit  os  Sugar  Co.  v.  Carroll.    .  L73  F.  R 77,  215 

Louden   Mach.   Co.   v.   Montgomery 

Ward*  Co .96  F.  H 510 

Louis  Metzger  &  Co.  v.  Berlin 194  F.  R 834 

Lourie  Lmplement  <  !o.  v.  Lenharl    .  .  L30  F.  R 454 

Lovell  v.  Davis 101  U.  S 610 

Lovell  v.  Johnson 82  F.  R 712 

Lovell  Mfg.  Co.  v.  Automatic  Wringer 

Co .  .  124  F.  R 645 

Lovell  Mfg.  Co.  v.  Cary 147  U.  S 51 

Low  v.  Stove  Co 36  F.  R 49 

Lowell  Mfg.  Co.  v.  Hartford  Carpet 

Co 2  Fisher 790 

Lowell  Mfg.  Co.  v.  Hogg 70  F.  R 694,  724 

Lowell  Mfg.  Co.  v.  Whittall 71  F.  R 601,  632 

Lowrie  v.  Meldrum  Co 121  F.  R 82,  238 

Lowry  v.  Allen 203  U.  S 153 

Lowry  v.  Cowles  Aluminum  Co 56  F.  R 335,  655,  694 

Lowry  v.  Cowles  Aluminum  Co 68  F.  R 335 

L.  S.  Starrett  Co.  v.  Brown  &  Sharpe 

Mfg.  Co 208  F.  R 834 

Ludwigs  v.  Payson  Mfg.  Co 206  F.  R 630 

Luten  v.  Camp 221  F.  R 669 

Luten  v.  Dover  Construction  Co 189  F.  R 511,  519,  652,  711 

Luten  v.  Rhoads  &  Kinsely 194  F.  R 787 

Lyell  v.  Miller 6  McLean 602 

Lyman    Ventilating    &    Refrigerator 

Co.  v.  Lalor 1  Bann.  &  Ard 74 

Lyons  v.  Drucker 106  F.  R 684 

M 

Mabie  v.  Haskell 2  Cliff 58,  424,  434 

Macbeth  v.  Braddock  Glass  Co 54  F.  R 801 

Macbeth  v.  Gillinder 54  F.  R 257,  461,  707,  801 

Macbeth  v.  Lippencott  Glass  Co ....  54  F.  R 763 

Macbeth-Evans  Glass  Co.  v.  Rosen- 

baum  Co 199  F.  R 462 

Macey  Co.  v.  Globe  Wernicke  Co.  ...  180  F.  R '548 

Machesney  v.  Brown 29  F.  R 328 

Machine  Co.  v.  Murphy 97  U.  S 437 

Mack  v.  Levy 49  F.  R 798 


TABLE    OF    CITED    CASKS  cxix 

Names  of  Cases.  Where  Reported,  Pages  in  thi 

Muck  p.  Levy 59  F.  R 799 

Mack  v.  Levy 60  F.  R 544,  5  \q 

Mack  v.  Optical  Mfg.  Co 52  F.  R 54 

MacKay  p.  Jackman 12  F.  R 4 

Mackaye  p.  MaJlory 12  F.  R .330 

Macldock  v.  Coxon 45  F.  R 232,  235,  236 

Magic  Ruffle  Co.  v.  Douglas 2  Fisher 100,  623 

Magin  v.  Karte 150  U.  S 21 

Magowan  v.  Belting  Co 141  U.  S 27,  55 

Mahn  v.  Harwood 3  Bann.  &  Ard 49 

Mahn  v.  Harwood 112  U.  S 292,  294,  295 

Mahon  v.  McGuire  Mfg.  Co 51  F.  R 30,  46 

Mahony  v.  Malcolm 143  F.  R 58 

Maimen    v.    Union    Special  Machine 

Co 165  F.  R 642,  809 

Maitland  v.  Gibson 79  F.  R 350 

Maitland  v.  Graham 96  F.  R 707 

Malignani  v.  Germania  Electric  Light 

Co 169  F.  R 422 

Malignani     v.     Hill-Wright     Electric 

Co 177  F.  R 422 

Malignani  v.  Jasper  Marsh  Co 180  F.  R 204,  218,  239,  580 

Mallon  v.  Gregg  &  Co 137  F.  R 433,  442 

Mallory  Mfg.  Co.  v.  Hickok 20  F.  R 762 

Maltby  v.  Bobo •.  .  .  14  Blatch 489 

Manhattan  Book  Casing  Mach.  Co. 

P.  E.  C.  Fuller  Co 204  F.  R 146 

Manhattan    General    Const.    Co.    v. 

Helios-Upton  Co 135  F.  R 13,  267,  274 

Mann's  Car  Co.  v.  Monarch  Car  Co .  .34  F.  R 53,  601 

Manufacturing  Co.  v.  Cowing 105  U.  S 812,  819 

Manufacturing  Co.  v.  Ladd 102  U.  S 304 

Manville    Mach.     Co.     v.    Excelsior 

Needle  Co 167  F.  R 41 

Many  v.  Jagger 1  Blatch 532 

Many  v.  Sizer 1  Fisher 92,  564,  762 

Marchand  v.  Emken 26  F.  R 53 

Marchand  v.  Emken 132  U.  S 51 

Marconi  Wireless  Telegraph  Co.  v. 
DeForest  Telephone  &  Tele- 
graph Co 225  F.  R 457 

Marconi   Wireless   Telegraph   Co.    p. 

National  Electric  Signal  Co ....  206  F.  R 674 


CXX  TABLE   OF   cited   casks 

Names  of  Cases.  Where  Reported.  Pages  in  thia  book. 

Marconi    Win-less  Telegraph   Co.   v. 

National  Electric  Signal  Co 213F.lt 718 

Marconi   Wireless  Telegraph  Co.   v. 

New  England  Navigation  Co. .  .191  F.  R 682 

Marconi    Wireless   Telegraph    (Jo.    v. 

Simon 231  F.  It 196,  197 

Marconi  Wireless  Tel.  Co.  v.  Simon.  .227  F.  R 197 

Marconi  Wireless  Tel.  Co.  v.  Simon.  .231  F.  It 1 

Marcus  r.  Sutton 124  F.  It 711 

Market  St.  Ry.  Co.  v.  Rowley 155  U.  S 595 

Marks'  Chair  Co.  v.  Wilson 43  F.  It 601 

Marsh  v.  Commissioner 3  Bissell Ill 

Marsh  v.  Dodge 4  Hun  (N.  Y.) 366 

Marsh  v.  Harris  Mfg.  Co 63  Wis 366,  806 

Marsh  v.  Nichols 128  U.  S 185 

Marsh  v.  Nichols 140  U.  S 469 

Marsh  v.  Seymour 97  U.  S 289,  637 

Marsh  v.  Stove  Co 51  F.  R 566 

Marshall  &  Stearns  Co.  v.   Murphy 

Mfg.  Co 199  F.  R 257 

Marston  v.  Sweet 66  N.  Y 366 

Martin  &  Hill  Cash  Carrier  Co.  v. 

Martin 67  F.  R 547,  548 

Marvel  v.  Decker 13  App.  D.  C 170 

Marvel  Buckle  Co.  v.  Alma  Mfg.  Co .  .  180  F.  R 300 

Marvel  Co.  v.  Pearl 114  F.  R 19 

Marvin  v.  Gotshall 36  F.  R 59 

Maryland  Homing  Co.  v.  Dorr 46  F.  R 218 

Mason  v.  Graham 23  Wallace 440,  818 

Mason  V.  Hepburn 13  App.  D.  C 169,  170 

Mason  v.  Railroad  Co 52  Maine 840 

Masseth  v.  Johnston 59  F.  R 630 

Masseth  v.  Larkin Ill  F.  R 243 

Masseth  v.  Palm 51  F.  R 437 

Massie's  Heirs  v.  Graham's  Adm'rs .  .  3  McLean 729 

Mast  v.  Superior  Drill  Co 154  F.  R 814 

Mast,  Foos  &  Co.  v.  Dempster  Mill 

Mfg.  Co 82  F.  R 94,  105,  106 

Mast,  Foos  &  Co.  v.  Stover  Mfg.  Co .  177  U.  S 30,  51,  59,  709,  785 

Mast,    Foos   &    Co.    v.    Windmill   & 

Pump  Co 68  F.  R 715 

Matheson  v.  Campbell 69  F.  R 217 

Matheson  v.  Campbell 77  F.  R 81 


TABLE    OF   CITED    CASES  CXxi 

Names  of  Cases.  Where  Reported.  Pages  in  this  hook. 

Mathcson  v.  Campbell 78  F.  R 218,  253,  458,  459 

Mathews  v.  Machine  Co 105  U.  S 295 

Matteawan    Mfg.    Co.    v.    Emmons 

Bros.  Co 185  F.  R 052 

Matthews  v.  Flower 25  F.  R 286,  581 

Matthews  v.  Mfg.  Co 18  Blatch 511 

Matthews  v.  Schoneberger 4  F.  R 236 

Matthews  v.  Skates 1  Fisher 459(  464 

Matthews  v.  Spangenberg 14  F.  R 277,  619 

Matthews  Gravity  Carrier  Co.  v.  Lister.54  F.  R 547 

Matthews    &    Willard    Mfg.    Co.    v. 

American  Lamp  &  Brass  Co ...  .  103  F.  R 80 

Matthews    &    Willard    Mfg.    Co.    v. 

National  Brass  &  Iron  Works .  .  .  71  F.  R 561 

Maunula  v.  Sunell 155  F.  R 239 

Maurer  v.  Dickerson 113  F.  R 223 

Maxwell  v.  Kennedy 8  Howard 682,  692 

Maxwell  Steel  Vault  Co.  v.  National 

Casket  Co 205  F.  R 643 

May  v.  Chaffee 2  Dillon 335,  354,  361 

May  v.  County  of  Buchanan 29  F.  R 488 

May  v.  County  of  Cass 30  F.  R 488 

May  v.  County  of  Juneau 30  F.  R 334,  487 

May  v.  County  of  Logan 30  F.  R 482,  483,  487,  550 

May  v.  County  of  Mercer 30  F.  R 487,  500,  516 

May  v.  County  of  Ralls 31  F.  R 487 

May  v.  County  of  Saginaw 32  F.  R 334 

May  v.  Juneau  County 137  U.  S 533,  595 

May  v.  Le  Claire 11  Wallace 341 

Maynard  v.  Pawling 5  Bann.  &  Ard 494 

Mayor   of   New   York   v.    American 

Cable  Ry.  Co 60  F.  R 560 

McArthur  v.  Supply  Co 19  F.  R 296,  303 

McBerty  v.  Cook 16  App.  D.  C 173 

McBride  v.  Kingman 97  F.  R 441 

McBride  v.  Plow  Co 44  F.  R 232,  235 

McBurney  v.  Goodyear 11  Cushing  (Mass.) 305 

McCarty  v.  Lehigh  Valley  Railroad 

Co 160  U.  S 241,  252 

McCaslin  v.  Link  Belt  Mach.  Co.  ...  139  F.  R 237 

McClain  v.  Ortmayer 33  F.  R 44 

McClain  v.  Ortmayer 141  U.  S.  .24,  44,  57,  220,  234,  240, 

247,  252,  434 


CXX11  TABLE    OF   CITED    CASES 

Names  of  Cases.  Where  Eleported,  Pages  in  this  book. 

\lc(  'limy  v.  Silliman 3  Peters .r)()s 

Mc(  'lure  v.  Jeffrey 8  [ndiana 343 

McClurg  v.  ECingsland 1  Howard 6,  180,  268 

McComb  v.  Brodie I  Woods.  .  .231,  423,  424,  61 1,  615 

McComb  v.  Eraesl I  Woods 99,  423,  757 

McCormick  v.  CleaJ 12  App.  D.  C L69 

McCormick  v.  Jerome 3  Blatch 631,  782,  795 

McCormick  v.  Seymour 2  Blatch 127,  577 

McCormick  v.  Seymour 3  Blatch 631 

McCormick  v.  Talcott 20  Howard 244,  444 

McCormick  Harvesting  Mach.  Co.  v. 

Aultman 09  F.  R.  .  .  .  137,  241,  430,  441,  446 

McCormick  Mach.  Co.  v.  Aultman  .  .  109  U.  S .  .  .  185,  219,  297,  407,  408 
McCormick  Mach.  Co.  v.  Minneapolis 

Harvester  Works 42  F.  R 88,  170 

McCormick     Waterproofing    Co.     v. 

Medusa  Waterproofing  Co 222  F.  R 258 

McCoy  v.  Nelson 121  U.  S 079 

McCreary     v.     Pennsylvania     Canal 

Co 141  U.  S 822 

McCreery  Engineering  Co.  v.  Mass. 

Fan  Co 195  F.  R 89,  118 

M'Culloch  v.  Maryland 4  Wheaton 261,  551 

McCulloh  v.  Association 45  F.  R 351 

McDonald  v.  Miller 84  F.  R 677 

McDonald  v.  Whitney 24  F.  R 94 

McDonald  v.  Whitney 39  F.  R 728 

McDowell  v.  Kurtz 77  F.  R 562,  757 

McDowell  v.  Ideal  Concrete  Machine 

Co 187  F.  R 280,  289,  292,  299 

McDuffee  v.   Hestonville,    M.   &    F. 

Pass.  R'y  Co 102  F.  R 355 

McEwan  Bros.  Co.  v.  McEwan 91  F.  R 248 

McFarland  v.  Spencer 23  F.  R 29 

McGill  v.  Whitehead  &  Hoag  Co 137  F.  R 254 

McKay  v.  Jackman 10  Reporter 782 

McKay  v.  Smith 39  F.  R 366,  368 

McKay  v.  Wooster 2  Sawyer 361 

McKay   &    Copeland    Mach.    Co.    v. 

Claflin 58  F.  R 237,  566 

McKeever  v.  United  States 14  Court  of  Claims 183 

McKeever  v.  United  States 23  O.  G 377 

McKenna  v.  Fisk 1  Howard 517 


TABLE    OF    CITED    CASES  CXxiil 

Named  of  Cases.  Where  Reported.  Pages  in  this  book. 

McKernan  v.  Hitc 6  Indiana 339 

McKnight  v.  Metal  Volatilization  Co. .  128  F.  R 157 

McKnight  v.  McNiece 64  F.  R 491 

McMahon  v.  Tyng 14  Allen  (Mass.) 573 

McMaster  v.  Dougherty  Mfg.  Co. ...  219  F.  R 750 

McMichael  &  Wildman  Mfg.  Co.  v. 

Ruth 123  F.  R 726 

McMichael  &  Wildman  Mfg.  Co.  v. 

Ruth 128  F.  R 346 

McMickin  v.  Perin 18  Howard 836 

McMillan  v.  Conrad 16  F.  R 773 

McMillin  v.  Rees 5  Bann.  &  Ard .  .  84,  85,  231,  232,  235 

McMurray  v.  Mallory Ill  U.  S 270 

McNeely  v.  Williames 96  F.  R 631 

McNeil  v.  Holbrook 12  Peters 508 

McNish  v.  Everson 5  Bann.  &  Ard 78 

McSherry  Mfg.  Co.  v.  Dowagiac  Mfg. 

Co 101  F.  R 454 

McSherry  Mfg.  Co.  v.  Dowagiac  Mfg. 

Co 160  F.  R 622,  813 

McWilliams  v.  Webb .  .32  Iowa 338 

McWilliams  Mfg.  Co.  v.  Blundell.  .  .  .  11  F.  R 775 

Mead-Morrison   Mfg.   Co.   v.   Exeter 

Machine  Works 225  F.  R 215 

Meers  v.  Kelly 31  F.  R 22 

Mellor  v.  Carroll 141  F.  R 547 

Menasha  Wood  Split  Pulley  Co.  v. 

Dodge 85F.R 763 

Merchant  v.  Lewis 1  Bond 600 

Mergenthaler  v.  Scudder 11  App.  D.  C 168 

Mergenthaler    Co.    v.    International 

Typesetting  Machine  Co 229  F.  R 60,  548 

Mergenthaler  Co.  v .  Press  Pub.  Co. .  .  57  F.  R 99,  448 

Mergenthaler  Co.  v.  Ridder 65  F.  R 501,  503 

Mergenthaler  Co.  v.  Seymour 66  O.  G 157 

Merrell-Soule  Co.  v.  Powdered  Milk 

Co s 215  F.  R 204 

Merrell-Soule  Co.  v.  Powdered  Milk 

Co 222  F.  R 70 

Merriam  v.  Drake 5  Fisher 437 

Merriam  v.  Smith 11  F.  R 481 

Merrill  v.  Yeomans 94  U.  S 190,  251 

Merrimac  Mattress  Co.  v.  Feldman.  .  133  F.  R 73,  78,  79 


cxxiv  TABLE    OF   CITED    CASKS 

VuiK'H  of  Cases.  Where  Reported.  Pages  iu  this  book. 

Merrimao     Mattress     Mfg.     Co.     v. 

Schlesinger 124  F.  R 684 

Merrow  v.  Shoemaker 59  F.  R 88,  441 

Morshon  v.  Furnace  Co 24  F.  R t>27 

Metallic  Extraction  Co.  v.  Brown. ...  104  F.  R 432,  720 

Metallic  Extraction  Co.  v.  Brown. ...  110  F.  R 241,  601 

Mevs  v.  Conover 125  U.  S 298,  823 

Mewes'  Appeal 2  0.  G 152 

Meyer  v .  Bailey 2  Bann.  &  Ard 30(5 

Meyer  v.  Pritchard 1  Bann.  &  Ard 52 

Meyer  v.  Rothe 13  App.  D.  C 592 

Meyers  v.  Skinner 186  F.  R 794 

Meyrowitz  Mfg.  Co.  v.  Eccleston 98  F.  R 681 

Michaels  v.  Roessler 34  F.  R 219 

Michigan    Central    Railroad    Co.    v. 

Car-Heating  Co 67  F.  R 164,  535,  689 

Michigan  Stove  Co.  v.  Fuller-Warren 

Co 81  F.  R 694 

Middletown  Tool  Co.  v.  Judd 3  Fisher 306 

Miehle  v.  Read 18  App.  D.  C 168 

Miehle  v.  Read 96  O.  G 170 

Millard  v.  Chase 108  F.  R 705,  720 

Miller  v.  Brass  Co 104  U.  S 288,  289,  293,  539 

Miller  v.  Eagle  Co 151  U.  S. .  135,  222,  233,  439,  441, 

446,  448 

Miller  v.  Foree 116  U.  S 50 

Miller  v.  Last  Co 105  F.  R 424 

Miller  v.  Mclntyre 6  Peters 697 

Miller  v.  Schwarner 130  F.  R 676 

Miller-Magee  Co.  v.  Carpenter 34  F.  R 466 

Millett  v.  Duell 96  O.  G 70,  71 

Milligan  v.  Mfg.  Co 21  F.  R 342 

Milligan  &  Higgins  Glue  Co.  v.  Up- 
ton   1  Bann.  &  Ard 304 

Millner  v.  Schofield 4  Hughes 494 

Millner  v.  Voss 4  Hughes 42 

Milloy    Electric    Co.     v.    Thompson- 
Houston  Electric  Co 148  F.  R 294 

Mills  v.  Industry  Novelty  Co 230  F.  R 101 

Milner  Seating  Co.  v.  Yesbera 133  F.  R 55 

Milwaukee  Co.  v.  Avery 209  F.  R 45 

Milwaukee  Carving  Co.  v.  Brunswick- 

Balke  Co 126  F.  R 448,  676 


TABLE    OF    CITED    CASKS  CXXV 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Mine  &  Smelter  Co.  t>.  Braeckcl  Con- 
centrator Co 197  F.  R Iti.-, 

Minneapolis     Harvester     Works     v. 

Machine  Co 28  F.  R 7f,l> 

Minturn  V.  Seymour 4  Johnson's  Chancery  (N.  Y.).  77s 

Missouri  v.  Bell  Telephone  Co 24  American  Law  Register.  ...  102 

Missouri     Lamp    &     Mfg.     Co.     v. 

Stempel 75  F.  R r,  is 

Mitchell  v.  Hawley 16  Wallace 320,  321,  357,  362 

Mitchell    v.    International    Tailoring 

Co 169  F.  R 794 

Mitchell  v.  International  Tailoring  Co.  170  F.  R 5 

M'Millin  v.  Barclay 5  Fisher 179 

Moat  v.  Holbein 2  Edwards'  Chancery  (N.  Y.) .  .  781 

Model    Bottling    Co.    v.    Anheuser- 
Busch  Brewing  Assn 145  F.  R 177 

Moffitt  v.  Garr 1  Black 297 

Moline  Plow  Co.  v.  Parlin  &  Oren- 

dorff  Co 84  F.  R 94 

Moline  Plow  Co.  v.  Rock  Island  Plow 

Co 212  F.  R 87 

Moneyweight    Scale    Co.    v.    Toledo 

Computing  Scale  Co 187  F.  R 290,  292 

Moneyweight    Scale    Co.    v.    Toledo 

Computing  Scale  Co 199  F.  R 5P7 

Monroe  v.  McGreer 81  F.  R 235 

Montrose  v.  Mabie 30  F.  R 374 

Moody  v.  Fiske 2  Mason 423 

Moore  v.  Bare 11  Iowa 338 

Moore  v.  Marsh 7  Wallace.  .334,  346,  479,  480,  484 

Moore  v.  National  Boiler  Co 84  F.  R 366 

Moore  Filter  Co.  v.  Tonopoh-Belmont 

Development  Co 201  F.  R 216 

Moore  Mfg.  &  Foundry  Co.  v.  Cronk 

Hanger  Co 69  F.  R 327 

Morey  v.  Lockwood 8  Wallace 80,  289,  455 

Morgan  v.  Daniells 153  U.  S 173 

Morgan  Construction  Co.  v.  Foster- 
Miller  Co 234  F.  R 825 

Morgan  Engineering  Co.  v.  Alliance 

Mach.  Co 176  F.  R 218 

Morgan  Envelope  Co.  v.  Albany  Paper 

Co 40  F.  R 46 


c\\\  l  TABLE   of   CITED   casks 

Name       l  Where  Reported.  Pages  in  this  book. 

Morgan  Envelope  t '<>.  '•.  Albany  Paper 

Co  L52  1  .  8    . .   33,  252,  254,  361,  363 

Morgan    Gardner    Electric    Co.    v. 

Buettner    &    Shelburne    Mach. 

Co 203  F.  R 363 

Morley  Machine  Co.  ».  Lancaster      I29L.K 211,  I  13,  4-15 

Morrin  v.  Robert  White  Eng.  Wks.  .    143  F.  It 363 

Morris  v.  Barrett 1  Bond 423 

Morns  v.  Kempshall  Mfg.  Co 20  F.  R 233,  402 

Morris  v.  Mfg.  Co 3  Fisher 767,  774,  775 

Morris  v.  McMillin 112  U.  S 21,  27 

Morris  v.  Shelbourne 4  Fisher 774 

Morss  v.  Knapp 35  F.  R 790 

Morss  v.  Knapp 37  F.  R 544,  799 

Morton  v.  Infirmary 5  Blatch 3,  533 

Morton  v.  Llewellyn 164  F.  R 56,  542 

Morton  Trust  Co.  v.  American  Car 

&  Foundry  Co 121  F.  R 644 

Morton  Trust  Co.  v.  American  Car  & 

Foundry  Co 129  F.  R 644 

Morton   Trust   Co.    v.    Am.    Car   & 

Foundry  Co 169  F.  R 51,  694 

Morton  Trust  Co.  v.  Standard  Steel 

Car  Co 177  F.  R 788 

Mosler  &  Co.  v.  Lurie 209  F.  R 84 

Moss  v.  McConway-Torley  Co 144  F.  R 643 

Mossberg  v.  Nutter 135  F.  R 238,  239 

Motion  Picture  Patents  Co.  v.  Centaur 

Film  Co 217  F.  R 786 

Motion  Picture  Patents  Co.  v.  Inde- 
pendent Moving  Pictures  Co. .  .  .200  F.  R 255 

Motion     Picture     Patents     Co.     v. 

Laemmle 178  F.  R 673 

Motion     Picture     Patents     Co.     v. 

Laemmle 214  F.  R 285 

Motion  Picture  Patents  Co.  v.   Ull- 

man 186  F.  R 673 

Motion  Picture  Patents  Co.  v.  Uni- 
versal Film  Co 235  F.  R 395 

Moulton  v.  Commissioner  of  Patents. 61  O.  G 4 

Mowry  v.  Railroad  Co 5  Fisher 760 

Mowry  v.  Whitney 14  Wallace .  7,  80,  320,  406,  419,  822 

Mueller  i>.  Mueller 95  F.  R 376 


TABLE   OF   CITED    CASES  CXXvil 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Muller  v.  Lodge  &  Davis  Mach.  Tool 

Co 77  F.  R 239,  241 

Mumma  v.  Potomac  Co 8  Peters 504,  510,  787 

Mundy  v.  Mfg.  Co 34  F.  R 796,  798 

Municipal   Signal   Co.    v.    Gamewell 

Fire  Alarm  Tel.  Co 77  F.  R 725 

Munising  Paper  Co.  v.  American  Sul- 
phite Pulp  Co 228  F.  R 84,  453,  631 

Munson  v.  New  York 11  F.  R 723,  724 

Munson  v.  New  York 19  F.  R 790 

Munson  v.  New  York  City 124  U.  S 21 

Murdock  v.  Finney 21  Missouri 338 

Murphy  o.  Trenton  Rubber  Co 45  F.  R 35,  441 

Murray  v.  Detroit  Wire  Spring  Co.  .  .206  F.  R 453 

Murray  v.  Orr  &  Lockett  Hardware 

Co 153.F.  R 834 

Musgrave  &  Nye  v.  Commissioner  of 

Patents 78  O.  G 35 

Myers  v.  Cunningham 44  F.  R 469,  516 

Myers  v.  Dunbar 1  Bann.  &  Ard 733 

Myers  v.  Frame 8  Blatch 277 

Myers  v.  Sternheim 97  F.  R 566,  611 

Mygatt  v.  Schaffer 218  F.  R 98,  462 

Mygatt      v.     M.       Schauffer-Flaum 

Co 191  F.  R 22 


N 

Nathan  v.  Howard 143  F.  R 435 

Nathan  Mfg.  Co.  v.  Craig 47  F.  R 519 

Nathan  Mfg.  Co.  v.  Craig 49  F.  R 233,  398 

National    Automatic    Mach.    Co.    v. 

Automatic  Weighing  Mach.  Co.  .  105  F.  R 719 

National  Binding  Mach.  Co.  v.  James 

D.  McLaurin  Co 1S6  F.  R 438 

National  Box  &  Paper  Co.  v.  American 

Paper  Box  Co 48  F.  R 707 

National    Cable    Ry.    Co.    v.    Sioux 

City  Cable  Ry.  Co 42  F.  R 775 

National  Car  Brake  Shoe  Co.  v.  Mfg. 

Co 19  F.  R 464,  562,  619,  625 

National  Cash  Register  Co.  v.  Amer- 
ican Cash  Register  Co 53  F.  R 39.  226,  441,  443,  447 


CXXVDJ  TABLE   OF   CITED   CASES 

Names  of  Cam.  Where  Reported.  Pages  in  thin  In. <>k. 

National  ('ash  Register  Co.  v.  Amer- 
ican Cash  Register  Co  178  F.  R 114,  118 

National  ('ash  Register  Co.  i>.  Boston 

('ash  Recorder  Co 41  F.  R 791 

National     Cash      Register     Co.      V. 

Gratigny 213  F.  R 433 

National  Cash  Register  Co.  t/.Grobsl ,  l  ."'•'*  F.  K :itil 

National  Cash  Register  Co.  v.  Lam- 
son  Store-Service  Co (SO  F.  R 87,  403 

National  Cash  Register  Co.    v.    Le- 

land 77  F.  R 592 

National  Cash  Register  Co.  v.  Ice- 
land  94  F.  R 441,  504,  592 

National  Cash  Register  Co.  v.  Navy 

Cash  Register  Co 99  F.  R 560,  716,  774 

National  Cash  Register  Co.  v.  New 

Columbus  Watch  Co 129  F.  R 337 

National  Casket  Co.  v.  New  York  & 

Brooklyn  Casket  Co 185  F.  R 217 

National  Casket  Co.  v.  Stolts 135  F.  R 499 

National  Chemical  &   Fertilizer  Co. 

v.  Swift  &  Co 100  F.  R 537 

National  Co.  v.  Belcher 68  F.  R 28 

National  Co.  v.  Belcher 71  F.  R 28 

National  Conduit  Co.  v.  Connecticut 

Pipe  Mfg.  Co 73  F.  R 547 

National  Device  Co.  v.  Lloyd 40  F.  R 100 

National   Electric    Signalling    Co.    v. 

DeForest  Wireless  Telegraph  Co.  140  F.  R 274 

National    Electric    Signalling    Co.    v. 

Telefunken  Wireless,  etc.,  Co 194  F.  R 476 

National   Electric    Signalling    Co.    v. 

Telefunken  Wireless,  etc.,  Co. .  .  .200  F.  R 785 

National   Electric    Signalling    Co.    v. 

Telefunken  Wireless,  etc.,  Co. .  .  .221  F.  R 709 

National  Enamelling  &  Stamping  Co. 

v.  New  England  Enamelling  Co .  .  151  F.  R 240 

National  Folding-Box   &   Paper  Co. 

v.  American  Paper  Pail  &Box  Co. 55  F.  R 560 

National  Folding-Box  &   Paper  Co. 

v.  Brown  &  Bailey  Co 98  F.  R 763 

National  Folding-Box  &  Paper  Co.  i>. 

Dayton  Paper  Novelty  Co 95  F.  R 545,  811 


TABLE    OF   CITED    CASES  CXxix 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

National  Folding-Box  &  Paper  Co.  v. 

Dayton  Paper-Novelty  Co 97  F.  R 828 

National  Folding-Box  &  Paper  Co.  v. 

Robertson 104  F.  R 785,  795 

National  Harrow  Co.  v.  Quick 74  F.  R 83 

National  Harrow  Co.  v.  Westcott  .  .  .84  F.  R 49,  58 

National  Heeling-Maeh.  Co.  v.  Ab- 
bott   70  F.  R 326,  340,  3  15 

National  Hollow  Brake-Beam  Co.  v. 

Interchangeable  Brake-Beam  Co.  100  F.  R.  ..22,  55,  83,  94,  136,  231, 

239,  247,  447,  453 

National  Machine  Co.  v.  Brown 36  F.  R 87,  601 

National  Machine  Co.  v.  Hedden 29  F.  R 705 

National  Machine  Co.  v.  Thorn 25  F.  R 221 

National    Mach.    Co.    v.    Wheeler   & 

Wilson  Mfg.  Co 72  F.  R 234 

National   Malleable  Castings   Co.   v. 

American  Steel  Foundries 182  F.  R 135,  363 

National  Malleable  Castings  Co.  v. 
Buckeye  Malleable  Iron  &  Coup- 
ler Co  171  F.  R 249 

National   Malleable  Castings   Co.   v. 

Symington  Co 230  F.  R 493 

National   Malleable  Castings   Co.   v. 

Symington  Co 234  F.  R 719 

National    Mechanical   Directory   Co. 

v.  Polk 121  F.  R 500 

National  Metal  Weatherstrip  Co.  v. 

Bredin 186  F.  R 644,  812 

National     Meter    Co.     v.     Thomson 

Meter  Co 106  F.  R 132,  133,  218,  711 

National  Newsboard  Co.  v.  Elkhart 

Egg  Case  Co 123  F.  R 35 

National  Phonograph  Co.  v.  Fletcher. .  117  F.  R 363 

National  Phonograph  Co.  v.  Schlagel. .  128  F.  R 383 

National  Pump  Cylinder  Co.  v.  Gun- 
nison  17  F.  R 304 

National  Recording  Safe  Co.  v.  Inter- 
national Safe  Co 158  F.  R 549 

National  Roofing  Co.  v.  Garwood  .  .  .35  F.  R 31 

National  Rubber  Co.  v.  Rubber  Shoe 

Co 41  F.  R 368 

National  Spring  Co.  v.  Mfg.  Co 12  Blatch 289 


cXXX  TABLE    OF   CITED    casks 

Vim'.-  of  Caaes.  Whew  Reported.  Pages  in  this  book. 

National  Tooth  Crown  Co.  v.  Mac- 

donald 11"  F.  R 31 

National  Tube  Co.  v.  Aiken  L63  F.  R 37,  41,  55 

National  Tube  Co.  v.  Marks   21f>  F.  K 237 

National   Typographic   Co.    v.    New 

York  Typograph  Co 40  F.  It 254,  446,  754,  756 

Naylor  v.  Alsop  Process  Co 168  F.  It 72 

Neale  v.  Neals 9  Wallace 651 

Nealo  v.  Walker 1    Crunch's  Circuit  Court  Re- 

ports 550 

Nebraska    r.     Nebraska    Telephone 

Co 24  American  Law  Register  ....    192 

Neidich  v.  Edwards 169  F.  R 653 

Neidich  v.  Fosbenner 108  F.  R 684 

NeiLson  v.  Bradshaw 16  App.  D.  C 167,  168 

Nellis  v.  Mfg.  Co 13  F.  R 511 

Nellis  v.  McLanahan 6  Fisher 510 

Nelson  v.  McMann 4  Bann.  &  Ard 484 

Neptune  Meter  Co.  v.  National  Meter 

Co 127  F.  R 34,  51 

Nesmith  v.  Calvert 1  Woodbury  &  Minot 343 

Neureuther  v.  Mineral  Point  Zinc  Co. .  179  F.  R 34 

New  v.  Warren 22  O.  G 4,  296 

New  American  File  Co.  v.  Nicholson 

File  Co 8  F.  R 207,  316 

New    Departure   Bell   Co.    v.    Bevin 

Mfg.  Co 64  F.  R 54,  231,  446,  651 

New    Departure    Bell    Co.    v.    Bevin 

Bros.  Mfg.  Co 73  F.  R 30,  92 

New  Departure  Bell  Co.  v.  Hardware 

Co 62  F.  R 400 

New  Departure  Bell  Co.  v.  Hardware 

Co 69  F.  R 589 

New  England   Motor   Co.    v.    B.    F. 

Sturtevant  Co 150  F.  R 95 

Newell  v.  West 13  Blatch 353 

Newgold  v.  American  Electrical  Nov- 
elty &  Mfg.  Co 108  F.  R 64 

Newhall  v.  McCabe  Hanger  Mfg.  Co. .  125  F.  R 754 

New  Home  Sewing  Machine  Co.  v. 

Singer  Mfg.  Co 68  F.  R 236 

New  Jersey  Wire  Cloth  Co.  v.  Buffalo 

Expanded  Metal  Co 131  F.  R 557 


TABLE    OF    CITED    CASES  CXXX1 

Namca  of  Cases.  Where  Reported.  Pages  in  this  book. 

New  Marshall  Engine  Co.  v.  Marshall 

Engine  Co 223  U.  S 469 

Newton  v.  Buck 72  F.  It 194,  361 

Newton  v.  Buck 77  F.  R 336,  350 

Newton  v.  McGuire 97  F.  R 431 

Newton  Mfg.  Co.  v.  Wilgus 90  F.  R 545 

Newton  v.  Woodward 16  App.  D.  C 172 

New  York  v.  Ransom 23  Howard 614,  615,  624 

New  York  Air-Brake  Co.  v.  Westing- 
house  Air-Brake  Co 69  F.  R 763 

New  York  &  Baltimore  Coffee  Polish- 
ing Co.  v.  New  York  Coffee  Pol- 
ishing Co 9  F.  R 408,  648 

New    York    Belting    Co.    v.    Gutta 

Percha  Mfg.  Co 56  F.  R 761 

New  York  Belting  Co.  v.  New  Jersey 

Car-Spring  Co 47  F.  R 480,  676 

New  York  Belting  Co.  v.  New  Jersey 

Car-Spring  Co 48  F.  R 80,  676 

New  York  Belting  Co.  v.  New  Jersey 

Car-Spring  Co 53  F.  R 462 

New  York  Belting  Co.  v.  New  Jersey 

Car-Spring  Co 137  U.  S 684 

New  York  Belting  Co.  v.  Rubber  Co. 30  F.  R 683 

New   York   Belting   Co.    v.    Rubber 

Co 32  F.  R 728 

New  York  Belting  Co.  v.  Sierer 149  F.  R 31 

New  York  Button  Works  v.  Crescent 

Button  Co 185  F.  R 753 

New  York  Filter  Co.  v.  Filter  Co.  .  .  .62  F.  R 722 

New  York  Filter  Co.  v.  Jackson 91  F.  R 494 

New  York  Filter  Co.  v.  Niagara  Falls 

Water  Works  Co 77  F.  R 772 

New    York   Filter   Co.    v.    Schwarz- 

walder 58  F.  R 381,  422 

New  York  Filter  Mfg.  Co.  v.  Chemi- 
cal Bldg.  Co 93  F.  R 764,  787 

New  York  Filter  Mfg.  Co.  v.  Loomis- 

Manning  Filter  Co 91  F.  R 771 

New  York  Filtration  Co.  v.  City  of 

Sullivan Ill  F.  R 485 

New  York  Grape  Sugar  Co.  v.  Amer- 
ican Grape  Sugar  Co 10  F.  R 751,  759,  773 


CXXX11  TABLE    OF    CITED    CASES 

Names  of  Co                                                   When   Reported.             Panes  in  this  book. 
New  York  Grape  Sugar  Co,  /'.  Amer- 
ican ( rrape  Sugar  Co 42  F.  R *<>*'> 

New  York  Grape  Sugar  ('<>.  v.  Buf- 
falo Grape  Sugar  Co .  24  1'.  R 680 

New  York  Packing  <  '<>.  v.  Magowan.   '-'7  I'.  R 786 

New  York  Paper  Ban  Machine  Co. 
v.    Union    Paper    Bag    Machine 

Co 32  F.  R 337.  345 

New  York  Pharmical  Association  v. 

Tilden 14  F.  R 529 

New  York  Phonograph  Co.  v.  Edison.  130  F.  R 365 

New  York  Phonograph  Co.   v.   Na- 
tional Phonograph  Co 144  F.  R 486 

New  York  Phonograph  Co.   v.   Na- 
tional Phonograph  Co 163  F.  R 372 

New  York  Scaffolding  Co.  v.  Whit- 
ney  224  F.  R 58,  256,  435,  493 

New  York  Sugar  Co.  v.  Sugar  Co.  .  .  .20  F.  R 651 

New  York  Sugar  Co.  v.  Sugar  Co.  .  .   35  F.  R 723 

Ney  v.  Ney  Mfg.  Co 69  F.  R 589 

Ney  Mfg.  Co.  v.  Drill  Co 56  F.  R 753,  771 

Ney  Mfg.  Co.  r.  G.  A.  Swineford  Co.  . 211  F.  R 39,  165 

Nichols  /'.  Newall 1  Fisher 413 

Nicholson  Pavement  Co.  v.  Jenkins.  .  14  Wallace 324 

Nikola  Tesla  Co.  v.  Marconi  Wireless 

Telegraph  Co 227  F.  R 400,  402 

Nims  v.  Johnson 7  California 583 

1900  Washer  Co.  v.  Cramer 169  F.  R 23S,  431 

Non-Magnetic  Watch  Co.  v.  Associa- 
tion  44  F.  R 186 

Noonan    v.    Chester    Park    Athletic 

Club  Co 99  F.  R 548 

Northwestern  Fire  Extinguisher  Co. 
v.  Philadelphia  Fire  Extinguisher 

Co 1  Bann.  &  Ard.  .74,    78,    210,    213, 

305,  352,  482 
Northwestern     Horse     Nail     Co.     v. 

Horse  Nail  Co 28  F.  R 432 

Norton  v.  Automatic  Can  Co 45  F.  R 787 

Norton  v.  Automatic  Can  Co 57  F.  R 464,  681 

Norton  v.  Automatic  Can  Co 59  F.  R 801 

Norton  v.  Automatic  Can  Co 61  F.  R 774 

Norton  v.  California  Can  Co 45  F.  R 437,  441 


TABLE    OF   CITED    CASES  CXXxiii 

Names  of  Cases.  Where  Reported.  Pagea  in  this  book. 

Norton  v.  Jensen 81  F.  It 544 

Norton  v.  Jensen 49  F.  It 424,  443,  544,  503 

Norton    v.    San   Jose    Fruit-Packing 

Co 79  F.  It 545 

Nourse  v.  Allen 3  Fisher 510 

Novelty  Glass  Works  v.  Brookfield.  .    170  F.  It 41,  58,  63,  814,  821 

Novelty  Glass  Works  v.  Brookfield.  .    172  F.  It 273,  601 

Noyes  v.  Willard 1  Woods or>7 

Nutter  v.  Mossberg 1 18  F.  R 725 

O 

O'Brien  v.  Gallagher 25  Conn 140 

O'Brien- Worthen  Co.  v.  Stempel.  .  .  .209  F.  R 54,  219,  232,  255,  259 

Ockington  v.  Law 66  Maine 327 

Odell  v.  Stout 22  F.  R 75,  277,  292,  303 

Odiorne  v.  Winkley 2  Gallison 568 

Office  Specialty  Co.   v.   Fenton   Me- 
tallic Mfg.  Co 174  U.  S 40 

Office  Specialty  Co.  v.  Globe  Co 65  F.  R 272 

Office  Specialty  Co.   v.   Winternight 

Mfg.  Co 67  F.  R 707 

Ohio  v.  Bell  Telephone  Co 36  Ohio  State  Reports 192 

O.  H.  Jewell  Filter  Co.  v.  Jackson.  .  .  140  F.  R.  .222,  236,  238,  239,  259, 

454 

Olds  v.  Brown 41  F.  R 105,  236 

Olin  v .  Timken 155  U.  S 44,  55,  94,  292 

Oliphant    v.    Salem    Flouring    Mills 

Co 5  Sawyer 411 

Oliver  v.  Chemical  Works 109  U.  S 375 

Oliver  v.  Felbel 20  App.  D.  C 167,  171 

Oliver  v.  Piatt 3  Howard 341 

Onderdonk  v.  Fanning 5  Bann.  &  Ard 798 

Onderdonk  v.  Parker 31  App.  D.  C 1")6 

Onondago    Indian    Wigwam    Co.    v. 

Kanoono  Indian  Mfg.  Co 1S2  F.  R 512,  547 

Oregon   Imp.   Co.   v.   Excelsior   Coal 

Co 132  U.  S .",40 

O'Reilly  v.  Morse 15  Howard.  .3,  64,  77,  131,  221,  228, 

266,  270,  272,  273,  301,  424,  435, 
440,  454,  533,  537,  580,  738 
O'Rourke  Engineering  &  Const.  Co. 

v.  McMullen 160  F.  R 56 


CXXXTV  TABLE    OF   I  ITED   C  U3ES 

Names  of  Cases,                                              Where  Reported.             Pages  in  this  book. 

( >it  v.  Littlefield 1  Woodbury    &    Minot.  .747,  751, 

756,  776 

Orr  &  Locket  t  Hardware  Co.  v.  .Mur- 
ray  163  F.  R 80S,  SKI 

Osborn  v.  Judd 29  P.  It 22 

Osborne  v.  Glazier 31  P.  It '.>:; 

Ostergren  >•.  Tripler 17  App.  D.  C 170 

Otley  v.  Watkins 30  F.  It 434,  457 

Otis  Elevator  Co.  v.  Portland  Co.  ...  127  F.  It 235 

( )tis  Mfg.  Co.  v.  Crane  Mfg.  Co 27  F.  It 484 

Ottumwa    Box    Car   Loader    Co.    /. 

Christy  Box  Car  Loader  Co 215  F.  R 67 

Oval  Wood  Dish  Co.  v.  Dandy  Creek, 

etc.,  Mfg.  Co 60  F.  R 225 

Overman  Wheel  Co.  v.  Elliott  Cycle 

Co 49  F.  R 518 

Overweight   Elevator   Co.    v.    Henry 

Vogt  Mach.  Co 102  F.  R 37 

Overweight  Elevator  Co.  v.  Improved 

Order  of  Red  Men 94  F.  R 563 

Overweight  Elevator  Co.  v.  Standard 

Elevator  Co 96  F.  R 677 

Ozan  Co.  v.  Union 207  U.  S 191 


Pacific  Bank  v.  Robinson 57  California 350 

Pacific  Cable  Ry.  Co.  v.  Butte  City 

Ry.  Co 52  F.  R 403,  404 

Pacific  Cable  Ry.  Co.  v.  Butte  City 

Ry.  Co 55  F.  R 93,  115,  238,  454 

Pacific  Cable  Ry.  Co.  v.  Butte  City 

Ry.  Co 58  F.  R 84,  238,  438,  537 

Pacific  Contracting  Co.  v.  Bingham. . 62  F.  R 45 

Pacific    Contracting    Co.    v.    Union 

Paving  Co 80  F.  R 472 

Pacific  Iron  Works  v.  Newhall 34  Connecticut 368 

Pacific  Steam  Whaling  Co.  v.  Alaska 

Packers'  Assn 100  F.  R 772,  783 

Packard  v.  Lacing-Stud  Co 70  F.  R 226 

Packet  Co.  v.  Sickles 19  Wallace 534,  614 

Page  v.  Buckley 67  F.  R 542 

Page  v.  Ferry 1  Fisher 133,  564 


TABLE    OF    CITED    CASES  CXXXV 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Page  v.  Telegraph  Co 18  Blatch 723,  765 

Page  Fence  Co.  v.  Land 49  F.  R 237 

Page  Machine  Co.  v.  Dow,  Jones  & 

Co 168  F.  R 277 

Paillard  v.  Bruno 29  F.  R 206 

Paine  v.  Snowden 46  F.  R 80 

Paine  v.  Trask 56  F.  R 560 

Pairpoint  Mfg.  Co.  v.  Eldridge  Co ...  71  F.  R 584 

Palmer  v.  Corning 156  U.  S 27 

Palmer  v.  Gatling  Gun  Co 8  F.  R 242 

Palmer  v.  John  E.  Brown  Mfg.  Co. .  .  84  F.  R 53 

Palmer  v.  John  E.  Brown  Mfg.  Co. .  .  92  F.  R 234 

Palmer  v.  Landphere 99  F.  R 489 

Palmer  v.  Mills 57  F.  R 751,  773 

Palmer  v.  Wilcox  Mfg.  Co 141  F.  R 751 

Palmer  Pneumatic  Tire  Co.  v.  Lozier .  .  69  F.  R 404 

Palmer  Pneumatic  Tire  Co.  v.  Lozier.  .  90  F.  R 225,  402 

Panoulias  v.  National  Equipment  Co. .  198  F.  R 697 

Panoulias     v.     National    Equipment 

Co 227  F.  R 829 

Panzl  v.  Battle  Island  Paper,  etc.,  Co. .  132  F.  R 503,  571 

Panzl   v.    Battle  Island    Paper,    etc., 

Co 138  F.  R 139 

Paper-Bag  Cases 105  U.  S 320,  361,  606 

Paper  Stock  Co.  v.  Disinfecting  Co. .  .  147  Mass 376 

Parham  v.  Machine  Co 4  Fisher 93,  242 

Parker  v.  Bigler 1  Fisher 562,  603 

Parker  v.  Brant 1  Fisher 641,  745,  748,  765 

Parker  v.  Dickinson 38  F.  R 58 

Parker  v.  Ferguson 1  Blatch 91 

Parker  v.  Hall 2  Fisher 508 

Parker  v.  Hatfiekl 4  McLean 704,  716 

Parker  v.  Hawk 2  Fisher 508 

Parker  v.  Haworth 4  McLean 464,  560 

Parker  v.  Hulme 1  Fisher 43,  464,  628 

Parker  v.  Sears 1  Fisher 786 

Parker  v.  Stebler 177  F.  R 95,  96 

Parker  v.  Stiles 5  McLean 272,  273 

Parker  &  Whipple  Co.  v.  Yale  Clock 

Co 123  U.  S 232,  287,  300,  303 

Parkhurst  v.  Kinsman 1  Blatch 779 

Parkhurst  v.  Kinsman 2  Blatch 699 

Parks  v.  Booth 102  U.  S.  .82,  135,  180,  603,  606,  739 


cxxxvi  TABLE   OF  CITED   casks 

Vim* ia  of  Cases.  Where  Eteported.  Pagt-8  in  this  book. 

Parlin   &   Orendorfi   Co.    '■•    Moline 

Plow  Co  89  F.  R mi 

Parrott  l>.  Wikoff 1  Louisiana  An'l :;:;."> 

[•arsons  v.  Seelye 100  F.  R 434,  684 

Parsons  Non-Skid  Co.  v.  Ascfa 196  F.  R 457 

Parsons  Non-Skid  Co.  V.  Atlas  Ctiain 

Co L98  F.  R 457 

Parsons  Non-Skid  ( !o.  v.  E.  Willis 170  F.  K 498 

Patent  Clothing  Co.  v.  Glover 141  U.  S 51,  737 

Patents  Selling  &    Exporting  Co.  v. 

Dunn 213  F.  R 60 

Patee  Plow  Co.  v.  Kingman  &  Co..  .  .129  U.  S 21,  300 

Patterson  v.  Duff 20  F.  It 29 

Patterson  v.  Kentucky 97  U.  S 192 

Patterson  v.  Stapler 7  F.  R 638 

Patterson  v.  United  States 202  F.  R 141 

Paul  Boynton  Co.   v.   Morris  Chute 

Co 87  F.  R 237 

Paulus  v.  M.  M.  Buck  Mfg.  Co 129  F.  R 357,  365 

Paynes  v.  Coles 1  Munford  (Va.) 546,  714 

Pearce  v.  Mulford 102  U.  S 21 

Pearce  v.  Rice 142  U.  S 657 

Peard  v.  Johnson 23  F.  R 438 

Pearl  v.  Ocean  Mills 2  Bann.  &  Ard 302 

Peck  v.  Bacon 18  Connecticut 339 

Peck  v.  Collins 103  U.  S 297 

Pedersen  v.  Dundow 220  F.  R 45,  719 

Peek  v.  Frame 9  Blatch 627 

Peek  v.  Frame 5  Fisher 270,  273 

Pelle  Co.  v.  Raskin 194  F.  R 547 

Pelouze  Scale  &  Mfg.  Co.  v.  American 

Cutlery  Co 102  F.  R 18 

Pelton  v.  Waters 1  Bann.  &  Ard 82 

Pelton  Water  Wheel  Co.  v.  Doble  ...  190  F.  R 39 

Pelzer  v.  Meyberg 97  F.  R 285 

Penfield  v.  Chambers  Bros.  Co 92  F.  R 447 

Penfield  v.  Potts  &  Co 126  F.  R 543,  819 

Penn.  Electric  &  Mfg.  Co.  v.  Conroy. .  159  F.  R 116 

Penn.  Electric  &  Mfg.  Co.  v.  Conroy.  .  185  F.  R 290 

Pennington  v.  Gibson 16  Howard 590 

Pennington  v.  Hunt 20  F.  R 545 

Pennington  v.  King 7  F.  R 85 

Pennock  v.  Dialogue 2  Peters 106,  108,  120,  611 


TABLE    OF    CITED    CASES  CXXX\'ii 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Pennsylvania  Drill  Co.  v.  Simpson .  .  .  29  F.  R 75 

Pennsylvania  Drill  Co.  v.  Simpson .  .  .  39  F.  R 793 

Pennsylvania  Railroad  Co.  v.  Truck 

Co 110  U.  S 51 

Pentlarge  v.  Beeston 14  Blatch 752,  759 

Pentlarge  v.  Beeston 1  F.  R 800 

Pentlarge  v.  Kirby 19  F.  R 413,  415 

Pentlarge  v.  New  York  Bushing  Co .  .20  F.  R 233 

People  v.  Sturtevant 5  Selden  (N.  Y.) 781 

Peoria  Target  Co.  v.  Cleveland  Tar- 
get Co 47  F.  R 292 

Peoria  Target  Co.  v.  Cleveland  Tar- 
get Co  58  F.  R 292 

Perfection  Cooler  Co.  v.  Rose  Mfg. 

Co 175  F.  R 759 

Perkins  Electric  Switch  Mfg.  Co.  v. 

Gibbs  Electric  Mfg.  Co 87  F.  R 26 

Perkins  Electric  Switch  Co.  v.  Yost 

Electric  Mfg.  Co 189  F.  R 717,  741 

Perrigo  v.  Spaulding 13  Blatch 381 

Perry  v.  Cornell 1  McArthui's  Patent  Cases.  ...     87 

Perry  v.  Corning 7  Blatch 341 

Perry  v.  Foundry  Co 12  F.  R 46 

Perry  v.  Starrett 3  Bann.  &  Ard 80,  461 

Peters  v.  Active  Mfg.  Co 129  U.  S 33,  51,  246 

Peters  v.  Chicago  Biscuit  Co 142  F.  R 641 

Peters  v.  Hangar 134  F.  R 523,  549 

Peters  v.  Hanson 129  U.  S 51,  246 

Peters  v.  Union  Biscuit  Co 120  F.  R 94 

Peterson  v.  Chemical  Bank 32  N.  Y 483 

Petrie  v.  De  Schweinitz 19  App.  D.  C 168 

Pettibone,  Mulliken  &  Co.  v.  Penn. 

Steel  Co 133  F.  R 96 

Pfanschmidt  v.  Mercantile  Co 32  F.  R 724 

Phelps  v.  Classen 1  Woolworth 335 

Phelps  v.  Mayer 15  Howard 612 

Philadelphia  &  Reading  Railroad  Co. 

v.  Derby 14  Howard 490 

Philadelphia  &  Trenton  Railroad  Co. 

v.  Stimpson 14  Peters 88,  292,  609 

Philadelphia  Creamery  Supply  Co.  v. 
Davis  &  Rankin  Bldg.  &  Mfg. 
Co 77  F.  R 372 


cxxxvni  TABLE   OF   CITED   casks 

Names  <>f  Cases.  W  ben  Reported.  Pages  in  this  book. 

Philadelphia  Creamery  Supply  Co.  v. 

Davis  iV   Rankin  Bldg.  &  Mfg. 

Co 79  F.  R 422 

Philadelphia   Rubber  Works  Co.   v. 

United  States  Rubber  Reclaiming 

Works 225  F.  R 589 

Philadelphia     Trust,    Co.    v.    Edison 

Electric  Light  Co 65  F.  R 381,  766 

Philip  v.  Nock 17  Wallace 615,  631 

Phillips  v.  Comstock 4  McLean 534 

Phillips  v.  Detroit 3  Bann.  &  Ard 781,  796,  799 

Phillips  v.  Detroit Ill  U.  S 40,  570 

Phillips  v.  Page 24  Howard 33,  533 

Phoenix  Caster  Co.  v.  Spiegel 133  U.  S 255 

Phoenix  Knitting  Works  v.  Hygienic 

Fleeced  Underwear  Co 194  F.  R 52 

Phoenix    Knitting    Works    v.    Loner 

Bros 194  F.  R 217 

Phoenix  Knitting  Works  v.  Rich 194  F.  R 217 

Piaget  Novelty  Co.  v.  Headley 108  F.  R 330 

Piaget  Novelty  Co.  v.  Headley 123  F.  R 812,  819 

Pickering  v.  McCullough 104  U.  S 38,  79 

Picquet  v.  Swan 3  Mason 482 

Picrpont  Boiler  Co.  v.  Penn.  Iron  & 

Coal  Co 75  F.  R 327 

Pike  v.  Potter 3  Fisher 219 

Piper  v.  Brown 1  Holmes 805,  831,  836,  840 

Pirkl  v.  Smith 42  F.  R 633 

Pitts  v.  Hall 2  Blatch 127,  578,  690 

Pitts  v.  Hall 3  Blatch 336 

Pitts  v.  Jameson 15    Barbour    (N.    Y.    Supreme 

Court) 348 

Pitts  v,  Wemple 1  Bissell 238,  463 

Pitts  v.  Wemple 2  Fisher 91,  423 

Pitts  v.  Whitman 2  Story 338,  423 

Pittsburg  Meter  Co.  v.  Pittsburg  Sup- 
ply Co 109  F.  R 438,  439 

Pittsburgh  Reduction  Co.  v.  Cowles 

Aluminum  Co 55  F.  R 82,  95,  107,  219 

Pittsburgh  Reduction  Co.  v.  Cowles 

Aluminum  Co 64  F.  R 724 

Pittsburgh  Reduction  Co.  v.  Cowles 

Aluminum  Co 121  F.  R 722,  724 


TABLE    OF    CITED    CASES  CXXxix 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Planing-Machine  Co.  v.  Keith 101  U.  S.  .33,    106,    108,    111,    178, 

532,  686 
Planter's  Compress  Co.  v.  Moore  & 

Sons'  Co 106  F.  R 7.51 

Piatt  v.  Fire  Extinguisher  Mfg.  Co.  . 59  F.  R 327,  369 

Plimpton  v.  Winslow 14  F.  R 117 

Plummer  v.  Sargent 120  U.  S 224 

Plunger    Elevator    Co.    v.    Standard 

Elevator  Co 165  F.  R 564 

P.  M.  Co.  v.  Ajax  Rail  Anchor  Co.  .  .216  F.  R 668 

Pohl  v.  Anchor  Brewing  Co 134  U.  S 206 

Pohl  v.  Heyman 58  F.  R 206 

Pollock   v.   Farmers'   Loan  &   Trust 

Co 158  U.  S 261 

Pomace  Holder  Co.  v.  Ferguson 119  U.  S 27 

Pontiac    Boot    Co.    v.    Merino    Shoe 

Co 31  F.  R 343 

Poole   Bros.    v.    Isaac   H.    Blanchard 

Co 204  F.  R 56 

Pope  Mfg.  Co.  v.  Clark 46  F.  R 325,  485 

Pope  Mfg.  Co.  v.  Gormully  Mfg.  Co.  . 34  F.  R 454 

Pope  Mfg.  Co.  v.  Gormully  Mfg.  Co.  .  144  U.  S.  .27,  85,  102,  325,  346,  357, 

446 

Pope  Mfg.  Co.  v.  Johnson 40  F.  R 770 

Pope  Mfg.  Co.  v.  Owsley 27  F.  R 366,  368 

Poppenhusen  v.  Comb  Co 2  Fisher 99 

Poppenhusen  v.  Falke 5  Blatch 59 

Poppenhusen  v.  Falke 2  Fisher 572,  767 

Porter  Needle  Co.  v.  Needle  Co 17  F.  R 360 

Porter  Needle  Co.  v.  Needle  Co 22  F.  R 621 

Portland  Gold  Mining  Co.  v.  Herman .  160  F.  R 433 

Post  v.  Hardware  Co 26  F.  R 31 

Postal  Tel.  Cable  Co.  v.  Netter 102  F.  R 483 

Potter  v.  Braunsdorf 7  Blatch 316,  317 

Potter  v.  Crowell 3  Fisher 489,  764,  787 

Potter  v.  Dixon 5  Blatch 404 

Potter  v.  Dixon 2  Fisher 167 

Potter  v.  Fuller 2  Fisher 752,  772 

Potter  v.  Holland 4  Blatch 306,  484 

Potter  v.  Holland 1  Fisher 772 

Potter  v.  Mack 3  Fisher 785,  788 

Potter  v.  Muller 1  Bond 800 

Potter  v.  Stewart IS  Blatch 301,  440 


CXl  TABLE    OF   CITED    I  ASES 

Names  of  Cnscs.  When  Reported.  Pages  in  this  book. 

Potter  v.  Whitney 1  Lowell    272 

Potta  v.  Creager 155  U.  S 28,  32,  54,  55,  231 

Powder  ( !o.  V.  Powder  Works  '.is  I.  S 301,  692 

Powell  i'.  Leicester  Mills  Co 103  F.  R 424 

Lower  i».  Semmes 1  Crunch's  C.  C.  Reports 605 

Pratl  v.  Paris  Gas  Light  &  Coke  Co.  .  168  U.S 460 

I  Yai  i  v.  Sencenbaugh 64  F.  R 95 

Pratt  v.  Wilcox  Mfg.  Co 64  F.  R 365,  366 

Pratt  v.  Wright 65  F.  R 708 

Prepayment  Car  Sales  Co.  v.  Orange 

County  Traction  Co 221  F.  R 259 

Pressed  Prism  Plate  Glass  Co.  v.  Con- 
tinuous Glass  Press  Co 150  F.  R 223 

Prest-O-Lite  Co.   v.   Avery   Portable 

Lighting  Co 164  F.  R 326,  479,  512 

Preston  v.  Manard 116  U.  S 34 

Prevost  v.  Gratz 1  Peters'  C.  C.  Reports 723 

Priestly  v.  Montague 47  F.  R 65 

Prieth    v.    Campbell    Printing-Press 

Co 80  F.  R 779 

Prime  v.  Mfg.  Co 16  Blatch 338,  340 

Prindle  v.  Brown 155  F.  R 156 

Proctor  v.  Brill 16  F.  R 273 

Proudfit  Loose  Leaf  Co.  v.  Kalamazoo 

Loose  Leaf  Binder  Co 230  F.  R.  .21,  50,  165,  433,  435,  800, 

802 

Prouty  v.  Ruggles 16  Peters 138,  234,  433,  587 

Puetz  v.  Bransford 31  F.  R 324 

Pullman  v.  Railroad  Co 5  F.  R 761 

Pullman  Palace  Car  Co.  v.  Wagner 

Palace  Car  Co 44  F.  R 753,  766 

Putnam  v.  Yerrington 2  Bann.  &  Ard 301 

Q 

Quincy  Mining  Co.  v.  Krause 151  F.  R 61 


Rajah  Auto  Supply  Co.  v.  Rex  Igni- 
tion Mfg.  Co 209  F.  R 397 

Railroad  Co.  v.  Dubois 12  Wallace 221,  406 

Railroad  Co.  v.  Durant 95  U.  S 345 


TABLE    OF   CITED    CASES  CXli 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Railroad  Co.  v.  Howard 7  Wallace 504,  510,  251 

Railroad  Co.  v .  Mellon 104  U.  S 235,  240 

Railroad  Co.  v.  Smith 21  Wallace 609 

Railroad  Co.  v.  Trimble 10  Wallace 324,  330,  334 

Railroad  Supply  Co.  v.   Hart   Steel 

Co 222  F.  R 28,  39,  56,  226,  259 

Railway  Co.  v.  Sayles 97  U.  S.  .99,  164,  244,  435,  444,  535, 

587 
Railway  Register  Mfg.  Co.  v.   Rail- 
road Co 23  F.  R 280 

Railway  Register  Mfg.  Co.  v.  Rail- 
road Co 26  F.  R 721 

Railway  Register  Mfg.   Co.   v.   Rail- 
road Co 30  F.  R 437 

Ralya  v.  Atkins 157  Ind 334 

Ramsay  v.  Lynn 187  F.  R 55 

Rand,  McNally  &  Co.  v.  Exchange 

Scrip-Book  Co 187  F.  R 5 

Ransom  v.  New  York 1  Fisher 65,  82,  126,  180 

Ransome  v.  Hyatt 69  F.  R 589 

Rapid  Store  Service  Ry.  Co.  v.  Tay- 
lor  43  F.  R 54,  135,  219,  221,  447 

Rapp  v.  Kelling 41  F.  R 325,  486 

Rawson  &  Morrison  Mfg.  Co.  v.  C.  W. 

Hunt  Co 147  F.  R 304 

Raymond  v.  Woven  Hose  Co 39  F.  R 755 

Read  v.  Bowman 2  Wallace 335 

Read  v.  Miller 2  Bissell 530 

Read,   Holliday  &   Sons  v.   Schulze- 

Berge 78  F.  R 441 

Read  Machine  Co.  v.  Jaburg 221  F.  R 446 

Reay  v.  Raynor 19  F.  R 4,  676,  786 

Reckendorfer  v.  Faber 92  U.  S 38,  229,  570 

Red  Jacket  Mfg.  Co.  v.  Davis 82  F.  R 493 

Redway  v.  Ohio  Stove  Co 38  F.  R 22,  80,  461 

Reece    Button-Hole    Mach.    Co.    v. 

Globe  Button-Hole  Mach.  Co.  .  .61  F.  R 237,  436,  448 

Reece  Folding  Machine  Co.  v.  Earl  & 

Wilson. 205  F.  R 511 

Reece  Folding  Machine  Co.  v.   Fen- 
wick 140  F.  R 332 

Reed  v.  Chase 25  F.  R 435 

Reed  v.  Cutter 1  Story 90,  170,  273,  279 


C'xlii  TABLE    OF    CITED    CASES 

Vimcs  of  Cases.  When-  Reported  Pages  in  this  book. 

Reedy  v.  Scott 23  Wallace 099 

Reeves  v.  Keystone  Bridge  Co 2  Harm.  iV  Ard 723 

Regan  Vapor  Engine  Co.  v.  Pacific 

( iaa  Engine  Co 47  F.  It 341 

Regent   Mfg.  Co.  v.  Penn.  Electrical 

&  Mfg.  Co 121  F.  R 490 

Regina  Music  Box  Co.  v.  Newell.  ...  131  F.  R 371 

Regina  Music  Box  Co.  v.  Otto 114  F.  It 622,  623 

Reichenbach  v.  Kelley 17  App.  D.  C 168 

Rein  v.  Clayton 37  F.  R 209 

Reiter  v.  Jones 35  F.  R 59 

Reliance  Novelty  Co.  v.  Dworzek 80  F.  R 100 

Reminder  Lock  Co.  v.  Adler 71  F.  R 447 

Republic  Rubber  Co.  v.  G.  &  J.  Tire 

Co 212  F.  R 56 

Reutgen  v.  Kanowrs 1  Washington 492 

Reynes  v.  Dumont 130  U.  S 679 

Reynolds  v.  Standard  Paint  Co 68  F.  R 235 

Rhodes  v.  Lincoln  Press  Drill  Co 64  F.  R 258 

Rice  v.  Boss 46  F.  R 357,  358 

Rich  v.  Baldwin,  Tuthill  &  Bolton ...  133  F.  R 441 

Rich  v.  Lippincott 2  Fisher 90,  458 

Rich  v.  Ricketts 7  Blatch 508 

Richards  v.  Chase  Elevator  Co 158  U.  S 40,  683 

Richards  v.  Chase  Elevator  Co 159  U.  S 44 

Richards  v.  Meissner 158  F.  R 158,  160 

Richards  v.  Meissner 162  F.  R 158 

Richards  v.  Meissner 163  F.  R 160 

Richards  v.  West 2  Green's  Chancery  (N.  Y.) 781 

Richardson  v.  Hicks 1  McArthur's  Patent  Cases 576 

Richardson  v.  Osborne  &  Co 82  F.  R 681 

Richmond  v.  Atwood 52  F.  R 717,  720,  726 

Rickard  v.  Du  Bon 103  F.  R 100 

Riddick  v.  Moore 65  N.  C 483 

Riddle  v.  Mandeville 5  Cranch 481 

Ries  v.  Barth  Mfg.  Co.  .  . 136  F.  R 450,  463 

Ries  v.  Kirkegaard 30  App.  D.  C 156 

Rifle  &  Cartridge  Co.  v.  Arms  Co. ...  118  U.  S 106,  107,  108,  111 

Ring  Refrigerator  Co.  v.  St.  Louis  Ice 

Mfg.  Co 67  F.  R 492,  497 

Ripley  v.  Elson  Glass  Co 49  F.  R 633,  820 

Risdon  Iron  &  Locomotive  Works  v. 

Medart 158  U.  S 21,  30,  683 


TABLE    OF   CITED    CASES  cxllil 

Names  of  Cases.  Where  Reported.  Pages  in  thi 

Risdon  Iron  &  Locomotive  Works  v. 

Trent 92  F.  R 454,  491 

Riter-Conley  Mfg.  Co.  v.  Aiken 203  F.  R 16 

Ritter  v.  Serrell 2  Blatch 347 

Robbins  v.  Illinois  Watch  Co 78  F.  R 810 

Robbins  v.  Illinois  Watch  Co 81  F.  R 606,  810,  813 

Robert  H.   Ingersoll  &  Bro.   v.   Mc- 

Coll 204  F.  R 397 

Roberts  v.  Bennett 136  F.  R 570 

Roberts  v.  Buck 1  Holmes 686 

Roberts  v.  Harnden 2  Cliff 440,  463 

Roberts  v.  Nail  Co 53  F.  R 135,  221 

Roberts  v.  Roter 5  Fisher 421 

Roberts  v.  Ryer 91  U.  S 52,  231,  239 

Roberts  v.  Schuyler 12  Blatch 596 

Roberts  v.  Walley 14  F.  R 562 

Robins  Conveying  Belt  Co.   v.   Am. 

Road  Mach.  Co 145  F.  R 57,  238 

Robinson  v.  Chicago  Rys.  Co 174  F.  R 511 

Robinson  v.  Randolph 4  Bann.  &  Arc! 765,  779 

Robinson  v.  S.  &  B.  Lederer  Co 146  F.  R 801 

Rochester  Coach  Lace  Co.  v.  Schaefer .  46  F.  R 94 

Rocker  Spring  Co.  v.  Thomas 68  F.  R 164 

Rodebaugh  v.  Jackson 37  F.  R 49 

Rodwell  Sign  Co.  v.  V.  F.  Tuchfarber 

Co 127  F.  R 95 

Roe  v.  Hanson 19  App.  D.  C 169 

Roemer  v.  Bernheim 132  U.  S 724,  735 

Roemer  v.  Neumann 23  F.  R 512 

Roemer  v.  Neumann 26  F.  R 544 

Roemer  v.  Peddie 27  F.  R 232,  235 

Roemer  v.  Peddie 132  U.  S 259 

Roemer  v.  Simon 20  F.  R 431 

Roemer  v.  Simon 31  F.  R 623 

Roemer  v.  Simon 91  U.  S 725 

Roemer  v.  Simon 95  U.  S 686 

Roessing-Ernst  Co.  v.  Coal  &  Coke 

By-Products  Co 208  F.  R 548 

Roessler  v.  Hasslacher  Chemical  Co.  .219  F.  R 458 

Rogers  v.  Abbot 4  Washington 748 

Rogers  v.  Fitch 81  F.  R 95 

Rogers   Typograph   Co.    v.    Mergen- 

thaler  Co 64  F.  R 448 


CxllV  TABLE    OF   <  [TED   CASES 

Name  of  Ca  Where  Reported.  in  this  book. 

Roller  Mill  Patent 166  U.  S 243,  437 

Rollman  Mfg.  Co.  v.  Universal  Bard- 
ware  Works 207  I-'.  R 253,  649 

Rollman  Mfg.  Co.  v.  Universal  Hard- 
ware Works 218  P.  R 831 

RoUman  Mfg.  Co.  v.  Universal  Hard- 
ware Works 229  F.  R 794,  840 

Roosevelt  v.  Electric  Co 20  F.  R 300 

Roosevelt  v.  Telegraph  Co 33  F.  R 438 

Root  v.  Railway  Co 105  U.  S 486,  636,  675,  807 

Root  v.  Sontag 47  F.  R 683 

Root  v.  Third  Avenue  Railroad  Co.  .146  U.  S 114 

Rose  v.  Hirsh 71  F.  R 53 

Rose  v.  Hirsh 94  F.  R 622,  623 

Rose  v.  Hurley 39  Indiana 343 

Rose  Mfg.  Co.  v.  E.  A.  Whitehouse 

Mfg.  Co 193  F.  R 652 

llosenwasscr  v.  Spieth 129  U.  S 71 

Ross  v.  Ft.  Wayne 58  F.  R 518 

Ross  v.  Ft.  Wayne 63  F.  R 676,  700,  701 

Ross  v.  Fuller  &  Warren  Co 105  F.  R 368 

Ross  v.  Prentiss 4  McLean 728,  729 

Ross-Moyer  Mfg.  Co.  v.  Randall 104  F.  R 241 

Roth  v.  Harris 168  F.  R 148,  173,  809 

Rousseau  v.  Brown 104  O.  G 176 

Rowe  v.  Blanchard 18  Wisconsin 98,  576 

Rowe  v.  Blodgett  &  Clapp  Co 112  F.  R 19 

Rowell  v.  Lindsay 113  U.  S 234,  433,  437 

Rowell  v.  Wm.  Koehl  Co 194  F.  R 712 

Rowland  v.  Biesecker 185  F.  R 370 

Royal  Metal  Mfg.  Co.  v.  Art  Metal 

Works 121  F.  R 462 

Royal  Metal  Mfg.  Co.  v.  Art  Metal 

Works 130  F.  R 19 

Royer  v.  Belting  Co 40  F.  R 49 

Royer  v.  Belting  Co 135  U.  S 595 

Royer  v.  Coupe 29  F.  R 65,  146,  431,  464 

Royer  v.  Coupe 38  F.  R 49 

Royer  v.  Coupe 146  U.  S 256,  421 

Royer  v.  Mfg.  Co 20  F.  R 53,  583 

Royer  v.  Roth 132  U.  S 40 

R.  Thomas  &  Sons  Co.  v.  Electric 

Porcelain  &  Mfg.  Co Ill  F.  R 173 


TABLE    OF   CITED    CASES  oxl  V 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Rubber  Co.  v.  Goodyear 9  Wallace.  .  139,  223,  247,  289,  292, 

302,305,319,373,371,  182,  Is:;, 
687,  730,  804,  807,  808,  811,  812, 
819,  S20 
Rubber    Harness    Trimming    Co.    v. 

Rubber  Comb  Co 35  F.  R 53,  707 

Rubber-Tire  Wheel  Co.  v.  Davie.  ...  100  F.  R 518,  519 

Rubber  Tire  Wheel  Co.  v.  Goodyear 

Tire  &  Rubber  Co 232  U.  S 793 

Rubens  v.  Wheatfield 93  F.  R 784 

Rude  v.  Westcott 130  U.  S 616,  6X8,  638 

Rudge-Whiteworth,    Ltd.,    v.    Honk 

Mfg.  Co 221  F.  R 354 

Ruggles  v.  Eddy 10  Blatch 317 

Ruggles  v.  Eddy 11  Blatch 721 

Rumford  Chemical  Works  v.  Hecker.  .2  Bann.  &  Ard 494,  544,  785 

Rumford    Chemical    Works    v.    Hy- 
gienic Chemical  Co 159  F.  R 493 

Rumford  Chemical  Works  v.  N.  Y. 

Baking  Powder  Co 125  F.  R 34 

Rumford  Chemical  Works  v.  Vice. ...  14  Blatch 764,  771,  772,  787 

Rushmore    v.    Manhattan    Screw    & 

Stamping  Works 170  F.  R 795,  797 

Russell  v.  Barney 6  McLean 590 

Russell  v.  Dodge 93  U.  S 302 

Russell  v.  Hyde 39  F.  R 763 

Russell  v.  Kern 58  F.  R 325,  347 

Russell  v.  Kern 64  F.  R 540,  693 

Russell  v.  Kern 69  F.  R 67S 

Russell  v.  Kern 72  O.  G 235 

Russell  v.  Newark  Machine  Co 55  F.  R 411,  412 

Russell  v.  Place 9  Blatch 596,  627 

Russell  v.  Place 5  Fisher 628 

Russell  v.  Place 94  U.  S 226 

Russell  v.  Winchester  Repeating  Arms 

Co 97  F.  R 510,  644 

Ryan  v.  Gould 32  F.  R 72S 

Ryan  v.  Hard 145  U.  S 27,  31 

Ryan  v.  Lee 10  F.  R 349 

Ryan  v.  Newark  Spring  Mattress  Co .  .  96  F.  R 233,  234 

Ryder  v.  Schlichter 126  F.  R 226 

Ryder  v.  Townsend 188  F.  R 134 

Rynear  Co.  v.  Evans 83  F.  R 564 


c\lvi  TABLE    OF   CITED    CASKS 


Names  of  Caaea.  tt  h.  n-  Reported  Pages  in  t his  book. 

Sacketl  v.  Smith 42  F.  R 252 

Sacks  p.  Kufferle 127  F.  R 95,  543 

Safety  Car  Seating  A:  Lighting  Co.  v. 

Consolidated  Car  Heating  Co. .    .  160  F.  R 493,  681 

Safety  Car  Heating  it  Lighting  Co.  v. 

Could  Coupler  Co 229  F.  R 493 

St.    Louis   Street,   etc.,   Co.   v.   Am. 

Street,  etc.,  Co 156  F.  R 82,  442 

St.  Louis  Street,  etc.,  Co.  p.  Sanitary 

Street  Co 178  F.  R 357,  364 

Salt  Lake  City  V,  Hollister 118  U.  S 500 

Salts  Textile  Mfg.  Co.  v.  Tingue  Mfg. 

Co 208  F.  R 674 

Sample  t>.  American  Soda  Fountain 

Co 134  F.  R 276 

Sanders  v.  Hancock 128  F.  R 41,  237 

Sanford  v.  Messer 1  Holmes 357,  484 

San  Francisco  Bridge  Co.  p.  Keating .  .  68  F.  R 41,  595 

San  Francisco  Cornice  Co.  p.  Beyrle.  .195  F.  R 557 

Sanitary    Fireproofing,    etc.,    Co.    v. 

Sprickerhoff 139  F.  R 219 

Sanitary  Metal  Tile  Co.  p.  New  York 

Metal  Ceiling  Co 188  F.  R 652 

Sanitos  Nut  Food  Co.  p.  Voight 139  F.  R 223,  225 

Sargent  v.  Burgess 129  U.  S 438 

Sargent  v.  Covert 152  U.  S 27 

Sargent  v.  Larned 2  Curtis 366 

Sargent  p.  Lock  Co 114  U.  S 234,  240,  434 

Sargent  p.  Mfg.  Co 17  Blatch 623 

Sargent  v.  Seagrave 2  Curtis 754,  756,  757 

Sarven  v.  Hall 9  Blatch 437 

Saunders  v.  Allen 60  F.  R 71 

Sauvinet  v.  Poupono 14  Louisiana 647 

Sawyer  Spindle  Co.  v.  Eureka  Spindle 

Co 33  F.  R 298 

Sawyer  Spindle  Co.  v.  Morrison  Co .  .  52  F.  R 431 

Sawyer  Spindle  Co.  v.  Taylor 56  F.  R 573,  766 

Saxe  v.  Hammond 1  Holmes 495 

Saxton  p.  Aultman 15  Ohio  State 339 

Sayles    v.    Dubuque    &    Sioux    City 

Railroad 5  Dillon 314,  317,  344 


TABLE    OF   CITED   CASES  Cxlvii 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Sayles   v.    Oregon   Central    Railroad 

Co 4  Bann.  &  Ard 550 

Sayles  v.  Railroad  Co 2  Fisher Ill 

Sayles  v.  Railway  Co 4  Fisher 78,     91 

Sayles  v.  The  Lake  Shore  it  Michigan 

Southern  Railway  Co Manuscript 509 

Sayre  v.  Scott 55  F.  R 808 

Schaum  v.  Riehl 124  F.  R 241 

Schiehel  Toy  &  Novelty  Co.  v.  Clark     217  F.  R 350 

Schillinger  v.  Brewing  Co 24  O.  G , 304 

Schillinger  v.  Cranford 37  0.  G 436 

Schillinger  v.  Gunther 2  Bann.  &  Ard 799,  801 

Schillinger  v.  Gunther 17  Blatch 270,  275 

Schillinger  v.  United  States 155  U.  S 478 

Schlicht  &  Field  Co.  v.  Sewing  Ma- 
chine Co 36  F.  R 65,  579 

Schmeiser  Mfg.  Co.  v.  Lilly 189  F.  R 676 

Schmertz  Wire  Glass  Co.  v.  Pittsburgh 

Plate  Glass  Co 168  F.  R 161 

Schmertz  Wire  Glass  Co.  v.  Western 

Glass  Co 178  F.  R 161 

Schmertz  Wire  Glass  Co.  v.  Western 

Glass  Co 203  F.  R 827 

Schmid  v.  Mfg.  Co 37  F.  R 53,  601 

Schmidt  v.  Central  Foundry  Co 218  F.  R 374,  380 

Schmitt  v.  Nelson  Valve  Co 125  F.  R 326 

Schneider  v.  Bassett 13  F.  R 751,  758 

Schneider  v.  Poutney 21  F.  R 493 

Schneider  v.  Thill 5  Bann.  &  Ard 220 

Schoerken   v.    Swift   &    Courtney    & 

Beecher  Co 7  F.  R 573 

Schott  v .  Benson 1  Blatch 605 

Schreiber  v.  Grimm 65  F.  R 683 

Schreiber  v.  Sharpless 17  F.  R 414 

Schreiber  &  Sons  Co.  v.  Grim 65  F.  R 246,  683 

Schreiber  &  Sons  Co.  v.  Grimm 72  F.  R 53,  246 

Schultz  Belting  Co.  v.  Belting  Co. .  .  .40  F.  R 83 

Schultze  v.  Holtz 82  F.  R 100 

Schupphaus  v.  Stevens 17  App.  D.  C 172 

Schupphaus  v.  Stevens 95  O.  G 155 

Schuyler    Electric    Co.     v.     Electric 

Supply  Co 66  F.  R 269,  447 

Schwarzwalder  v.  Detroit 77  F.  R 557 


CXIviii  TABLE    OF    CITED    CASES 

Names  of  Cases  Winn-  Reported.  Pages  in  this  book. 

Schwarzwalder  o.  Filter  Co <iti  F.  R 275,  418 

Scofield  v .  Browne 158  F.  R .r)(>,  58 

Scott  v.  Laas 150  F.  R 760 

Scott  v.  Watson 46  Maine 488 

Screw  Co.  v.  Sloan 1  McArthur's  Patent  Cases.  ...     22 

Seabury  v.  Am  Ende 152  U.  S 216,  622,  812 

Seabnry  v.  Johnson 76  F.  R 436 

Seal  v.  Beach 113  F.  R 367 

Searle  v.  Hill 73  Iowa 326 

Searls  v.  Bouton 12  F.  R 373 

Searls  v.  Mcrriam 22  0.  G 48 

Scars  v.  United  States 1  Gallison 415 

Sedgwick  v.  Cleveland 7  Paige  (N.  Y.) 698 

Seegar  Refrigerator  Co.  v.  Am.  Car  & 

Foundry  Co 212  F.  R 810,  817 

Seegar    Refrigerator    Co.    v.    White 

Enamel  Refrigerator  Co 178  F.  R 788 

Seeley  v.  Brush  Electric  Co 44  F.  R 437 

Seibert  Oil  Cup  Co.  v.  Beggs 32  F.  R 469 

Seibert   Oil    Cup   Co.   v.    Lubricator 

Co 34  F.  R. .  .  .357,  369,  376,  479,  681 

Seibert  Oil  Cup  Co.  v.  Powell  Co 35  F.  R 201 

Seim  v.  Hurd 232  U.  S 793 

Selden  v.  Gas  Burner  Co 19  Blatch 209 

Selden  v.  Gas  Burner  Co 9  F.  R 292,  298,  306 

Sessions  v.  Gould 49  F.  R 751,  761 

Sessions  v.  Gould 60  F.  R 707 

Sessions  v.  Gould 63  F.  R 799 

Sessions  v.  Romadka 145  U.  S.   55,  264,  267,  276,  351,  446, 

821,  825,  828 
Severy    Process    Co.    v.    Harper    & 

Bros 113  F.  R 464 

Sewell  v.  Jones 91  U.  S 219,  220,  253 

Sewing  Machine  Co.  v.  Frame 24  F.  R 29,  288 

Seymour  v.  Marsh 6  Fisher 577 

Seymour  v.  McCormick 16  Howard 614,  615,  628 

Seymour  v.  McCormick 19  Howard 272,  573 

Seymour  v.  Osborne 11  Wallace.  .72,  99,  141,  185,   189, 

222,  228,  236,  292,  302,  433,  510, 
582,  686 

Shannon  v.  Bruner 33  F.  R 808 

Sharer  v.  McHenry 19  App.  D.  C 168 

Sharp  v.  Ricssner 119  U.  S 234,  433 


TABLE    OF   CITED    CASES  cxlix 

Names  of  Case*  Where  Reported.  Pages  in  this  book. 

Sharp  &  Smith  Mfg.  Co.  v.  Physicians' 

&  Surgeons'  Appliance  Co 174  F.  R 255 

Sharpless    v.    Moseley    &    Stoddard 

Mfg.  Co 75  F.  R 364,  485 

Shaw  v.  Boylan 16  Indiana 505 

Shaw  v.  Cooper 7  Peters 125 

Shaw  v.  Lead  Co 11  F.  R 99,  296,  481 

Shaw  Stocking  Co.  v.  Pearson 48  F.  R 257 

Shaw  Valve  Co.  v.  New  Bedford 19  F.  R 352 

Sheffield  Car  Co.  v.  D'Arcy 194  F.  R 41,  45,  720 

Sheffield  Ry.  Co.  v.  Gordon 151  U.  S 837 

Shelly  v.  Brannan 4  Fisher 776 

Shenfield  v.  Mfg.  Co 27  F.  R 53 

Shenfield     v.     Nashawannuck     Mfg. 

Co 137  U.  S 27 

Shepard  v.  Carrigan 116  U.  S 234,  252,  433,  434 

Sheridan-Clayton  Paper  Co.  v.  United 

States  Envelope  Co 232  F.  R 397,  495 

Sherman   v.   Champlain   Transporta- 
tion Co 31  Vt 341 

Sherman-Clay  &  Co.  v.  Searchlight 

Horn  Co 214  F.  R 57,  784 

Sherman-Clay  &   Co.   v.  Searchlight 

Horn  Co 225  F.  R 382,  791 

Shickle,    Harrison    &    Howard    Iron 

Co.  v.  St.  Louis  Car-Coupler  Co.  .77  F.  R 362 

Shields  v.  Barrow 17  Howard 651 

Shirley  v.  Sanderson 8  F.  R 93 

Shoemaker  v.  Merrow 61  F.  R 431 

Shoup  v.  Henrici 2  Bann.  &  Ard 78 

Shute  v.  Morley  Co 64  F.  R 718 

Shuter  v.  Davis 16  F.  R 59 

Sickles  v.  Borden 3  Blatch 438,  440 

Sickles  v.  Borden 4  Blatch 800 

Sickles  v.  Mitchell 3  Blatch. 751,  771 

Sickles  v.  Tileston 4  Blatch 771 

Siemens  v.  Sellers 123  U.  S 70,  208 

Siemens  Halske  Electric  Co.  v.  Dun- 
can Electric  Mfg.  Co 142  F.  R 547,  549 

Silsby  v.  Foote 1  Blatch 716 

Silsby  v.  Foote 14  Howard.  .222,  275,  434,  531,  566 

Silsby  v.  Foote 20  Howard 274,  581,  733 

Silver  &  Co.  v.  Eustis  Mfg.  Co 130  F.  R 750,  751 


Cl  TABLE    OF   CITED    CASES 

Names  of  Cases.  Where  Reported.  1'unes  in  this  book. 

Simmonds  r.  Morrison 44  F.  R ill 

Simmons  r.  Standard  I  »il  Co 62  1''.  R 95 

Simonds   Rolling-Mach.   Co.   v,    Ha- 

thorn  Mfg.  Co. .  .< 93  F.  R 95 

Simplex      Electric     Heating     Co.      r. 

Leonard 147  F.  R 502 

Simplex     Electric     Heating     Co.     v. 

Leonard 180  F.  R 448 

Simplex  Ry.  Appliance  Co.  /'.  Pressed 

Steel  Car  Co 189  F.  R 276 

Simplex    Railway    Appliance    Co.    v. 

Wands 115  F.  R 243,  398,  402 

Simpson  v.  Davis 12  F.  R 80 

Simpson  v.  Davis 22  F.  R 637,  808 

Sinclair  v.  Backus 5  Bann.  &  Ard 116 

Singer  v.  Braunsdorf 7  Blatch 85,  164 

Singer  v.  Walmsley 1  Fisher 218,  272,  273,  423 

Singer  Mfg.  Co.  v.  Brill 54  F.  R 433.  557 

Singer  Mfg.  Co.  v.  Cramer 192  U.  S 182,  237,  567,  608 

Singer  Mfg.  Co.  v.  Schenck 68  F.  R 95 

Singer    Mfg.    Co.    v.    Wilson    Mach. 

Co 38  F.  R 676 

Single  Track  Overhead  Ry.  Mfg.  Co. 

v.  Roden 98  F.  R 94 

Sipp  Electric,   etc.,   Co.   v.   Atwood- 

Morrison  Co 142  F.  R 96 

Sirocco    Engineering    Co.    v.    B.    F. 

Sturtevant  Co 173  F.  R 286 

Sirocco    Engineering    Co.    v.    B.    F. 

Sturtevant  Co 220  F.  R 70 

Sirocco  Engineering  Co.  v.  Monarch 

Ventilator  Co 184  F.  R 325 

Sisson  v.  Gilbert.  .  . 9  Blatch 122 

Sizer  v.  Many 16  Howard 605 

Slack  v.  Walcott 3  Mason 703 

Slawson  v.  Railroad  Co 107  U.  S 21,  42,  570,  683 

Sloan  Filter  Co.  v.  El  Paso  Reduc- 
tion Co 117  F.  R 727 

Sloan   Filter   Co.    v.    Portland   Gold 

Mining  Co 139  F.  R 34,  442 

Smead  v.  School  District 44  F.  R 277 

Smeeth  v.  Perkins  &  Co 125  F.  R 253 

Smith  v.  Davis 34  F.  R 93 


TABLE    OF   CITED    CASES  <!i 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Smith  v.  Dental  Vulcanite  Co 93  U.  S 32,  55,  108,   177,  238 

Smith  v.  Downing 1  Fisher 424,   i_'"i 

Smith  v.  Farbenfabriken  of  Elberfeld 

Co 203  F.  R 473,  474,  732 

Smith  v.  Felt 50  Barbour  (N.  Y.) I'.H 

Smith  v.  Halkyard 16  F.  R 752 

Smith  v.  Halkyard 19  F.  R 798 

Smith  v.  Macbeth 67  F.  R 236 

Smith  v.  Mercer 3  Penn.  L.  J.  Reports 306 

Smith  v.  Meriden  Britannia  Co 92  F.  R 751 

Smith  v.  Merriam 6  F.  R 292 

Smith  v.  Murray 27  F.  R 35 

Smith  v.  Nichols 21  Wallace 46,  276 

Smith  v.  Ridgely 103  F.  R 486,  547,  548 

Smith  v.  Saddle  Co 148  U.  S 18,  21,  51 

Smith  v.  Selden 1  Blatch 335 

Smith  v.  Stewart 55  F.  R 64,  462,  632,  820 

Smith  v.  Thompson 177  F.  R 157 

Smith  v.  United  States 1  Gallison 415 

Smith  v.  Vulcan  Iron  Works 165  U.  S 720 

Smith  v.  Walton 51  F.  R 411 

Smith  v.  Walton 56  F.  R 411 

Smith  &  Davis  Mfg.  Co.  v.  Mellon .  .  .  58  F.  R 118 

Smith  &  Egge  Mfg.  Co.  v.  Bridgeport 

Chain  Co 46  F.  R 242 

Smith  &  Griggs  Mfg.  Co.  v.  Sprague.  .  123  U.  S 116,  147 

Snow  v.  Railway  Co 121  U.  S 432 

Snyder  v.  Bunnell 29  F.  R 494 

Snyder  v.  Fisher 78  O.  G 22 

Societe  Anonyme  v.  Allen 84  F.  R 751,  766 

Societe  Anonyme  v.  Allen 90  F.  R 784 

Societe  Anonyme  t'.  General  Electric 

Co 97  F.  R 205,  657 

Societe    Fabriques,    etc.,    v.    Franco- 
American  Trading  Co 82  F.  R 378 

Societe    Fabriques,    etc.,    v.    George 

Lueders  &  Co 135  F.  R 92 

Solmson  &  Co.  v.  Bredin 136  F.  R 454 

Solomons  v.  United  States 21  Court  of  Claims 327 

Solomons  v.  United  States 22  Court  of  Claims 478 

Solomons  v.  United  States 137  U.  S 194,  324 

Solvay     Process     Co.     v.     Michigan 

Alkali  Co 90  F,  R 53,  246 


Clil  TABLE   OF   CITED   CASES 

Names  of  Cases.  Where  Reported,  Paces  in  this  book. 

Sone  v.  Palmer 28  Missouri 839 

Southard  v.  Russell 1<>  Howard 729,  730 

Southern  Pacific  Co.  v.  Earl 82F.lt 590,  783 

Southern  Plow  Co.  v.  Atlantic  Agri- 
cull  ural  Works 166  F.  R 684 

Spa.th  r.  Barney 22  F.  R 521 

Spalding  v.  Tucker 4  Fisher 005 

Sparhawk  v.  Wills 5  Gray  (Mass.) 840 

Sparkman  v.  Biggins 1  Blatch 64,  780 

Spaulding  v.  Page 1  Sawyer 381 

Spaulding  v.  Tucker Deady 504 

Specialty    Machine    Co.    v.    Ashcroft 

Mfg.  Co 213  F.  R 286 

Specialty  Mfg.  Co.  v.  Fenton  Mfg.  Co.  174  U.  S 570 

Spering's  Appeal 71  Pennsylvania  State 506 

Sperry  v.  Ribbans 3  Bann.  &  Ard 770 

Spill  v.  Celluloid  Mfg.  Co 21  F.  R 53,  722 

Spill  v.  Celluloid  Mfg.  Co 28  F.  R 728 

Spirella  Co.  v.  Unbone  Corset  Co 180  F.  R 490 

Sprague  Electric  Motor  Co.  v.  Steel 

Motor  Co 105  F.  R 749 

Sprague  Electric  Motor  Co.  v.  Union 

Ry.  Co 84  F.  R 431 

Sprague  v.  Mfg.  Co 12  F.  R 114 

Spring  v.  Machine  Co 4  Bann.  &  Ard 758,  770 

Spring  v.  Sewing  Machine  Co 13  F.  R 679 

Sproull  v.  Pratt  &  Whitney  Co 101  F.  R 366,  367 

Sproull  v.  Pratt  &  Whitney  Co 108  F.  R 738 

S.    S.    White    Dental    Mfg.    Co.    v. 

Johnson 56  F.  R 762 

Stafford  v.  Hair-Cloth  Co 2  Cliff 596 

Stafford  Co.  v.  ColdweU-Gildard  Co. .  .202  F.  R 289,  299,  300 

Stahl  v.  Ertel 62  F.  R 781,  796,  801 

Stahl  v.  Williams 52  F.  R 257 

Stahl  v.  Williams 64  F.  R 441 

Stainthorp  v.  Humiston 2  Fisher 774,  775 

Stainthorp  v.  Humiston 4  Fisher 75 

Standard     Button-Fastener     Co.     v. 

Ellis 159  Mass 357 

Standard    Cartridge    Co.    v.    Peters 

Cartridge  Co 77  F.  R 159,  173 

Standard    Caster    &    Wheel    Co.    v. 

Caster  Socket  Co 113  F.  R 533 


TABLE    OF    CITED    CASES  cliii 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Standard    Computing    Scale    Co.    v. 

Computing  Scale  Co 120  F.  R 493 

Standard  Dental  Mfg.  Co.  v.  Na- 
tional Tooth  Co 95  F.  R 370,  469 

Standard     Elevator     Co.     v.     Crane 

Elevator  Co 50  F.  R 751,  761 

Standard     Elevator     Co.     v.     Crane 

Elevator  Co 70  F.  R 560 

Standard  Fireproofing  Co.  v.  Toole  .  .  122  F.  R 488 

Standard  Folding  Bed  Co.  v.  Osgood  .51  F.  R 447 

Standard  Folding  Bed  Co.  v.  Osgood . 58  F.  R 438 

Standard  Gas  Co.  v.  Standard  Gas  Co  .224  F.  R 186 

Standard  Oil  Co.  v.  Southern  Pacific 

Co 42  F.  R 684 

Standard  Oil  Co.  v.  Southern  Pacific 

Co 48  F.  R 40 

Standard  Oil  Co.  v.  Southern  Pacific 

Co 54  F.  R 497 

Standard  Paint  Co.  v.  Bird 65  F.  R 238,  459 

Standard  Paint  Co.  v.  Bird 175  F.  R 463 

Standard    Plunger    Elevator    Co.    v. 

Stokes 196  F.  R 754 

Standard    Plunger    Elevator    Co.    v. 

Stokes 212  F.  R 549 

Standard  Sanitary  Mfg.  Co.  v.  United 

States 226  U.  S 387 

Standard    Scale    &    Foundry    Co.    v. 

McDonald 127  F.  R 639 

Standard  Sewing  Mach.  Co.  v.  Les- 
lie  118  F.  R 469,  608,  736 

Standard  Typewriter  Co.  v.  Standard 

F.  T.  S.  Co 181  F.  R 750 

Stapleton  v.  Kinney 18  App.  D.  C 171 

Stapleton  v.  Kinney 96  O.  G 171 

Star  Mfg.  Co.  v.  Crescent  Forge  & 

Schovel  Co 179  F.  R 116 

Starling  v.  Plow  Works 32  F.  R 371 

Starrett  v.  Arms  &  Tool  Co 96  F.  R 681 

Star  Salt  Caster  Co.  v.  Crossman ....  4  Bann.  &  Ard 637 

State  Bank  of  Chicago  v.  Hillmans  .  .  180  F.  R 227 

Steam  Cutter  Co.  v.  Sheldon 10  Blatch 359,  370 

Steam  Gauge  &  Lantern  Co.  v.  Ken- 
nedy  41  F.  R 277 


CUV  TABLE    OF    CITED    CASES 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Steam  Gauge  A:  Lantern  Co.  ;'.  Mfg. 

Co 28  F.  R 439 

Steam  Gauge  <fc  Lantern  Co.  v.  Mfg. 

Co 29  F.  R 424 

Steam  Gauge  &  Lantern  Co.  v.  Mey- 

rose 27  F.  R 540 

Steam  Gauge  &  Lantern  Co.  v.  Mil- 
ler  11  F.  R 778 

Steam  Gauge  &  Lantern  Co.  v.  Rogers.29  F.  R 446 

Steam  Gauge  &  Lantern  Co.  v.  Wil- 
liams   50  F.  R 248 

Steam  Stone  Cutter  Co.  v.  Mfg.  Co.  .  17  Blatch 381,  800,  811 

Steam   Stone   Cutter   Co.    v.   Short- 
sleeves 10  Blatch 358,  359 

Stearns  v.  Beard 40  F.  R 80 

Stearns  v.  Davis 1  McArthur's  Patent  Cases.  ...     04 

Stearns  v.  Phillips 43  F.  R 493 

Stearns-Roger  Mfg.  Co.  v.  Brown  ...  114  F.  R 783 

Stebler  v.  Riverside  Heights  Orange 

Growers  Ass'n 214  F.  R 50,  382,  492,  791 

Stegner  v.  Blake 36  F.  R 231 

Steiger  v.  Heidelberger 4  F.  R 489 

Steiger  v.  Waite  Grass  Carpet  Co. .  .  .  194  F.  R 253 

Steiger  v.  Waite  Grass  Carpet  Co. .  .  .  213  F.  R 433 

Stein  v.  Goddard 1  McAlister 47'J 

Steinberger  v.  General  Electric  Co ....  207  F.  R 794 

Steiner     Fire     Extinguisher     Co.     v. 

Adrian 52  F.  R 53,  231,  240 

Steiner     Fire     Extinguisher     Co.     v. 

Adrian 59  F.  R 246 

Steiner  &  Voegtly  Hardware  Co.  v. 

Tabor  Sash  Co 178  F.  R 29,  212,  286 

Steinmetz  v.  Allen 192  U.  S.  .  129, 151, 153, 154,  230,  732 

Stephens  v.  Felt 2  Blatch ,  025 

Stephens  v.  Salisbury 1  McArthur's  Patent  Cases.  ...     88 

Stephenson  v.  Railroad  Co 14  F.  R 78 

Stephenson  v.  Railroad  Co 114  U.  S 21 ,  40 

Sterrick  v.  Pugsley 1  Central  Law  Journal 749 

Stetson  v.  Herreshoff  Mfg.  Co 113  F.  R 225 

Stevens  v.  Cady 14  Howard 193,  300 

Stevens  v.  Gladding 17  Howard 193,  300 

Stevens  v.  Rodgers  Boiler  &  Burner 

Co 186  F.  R 542 


TABLE    OF    CITED    CASES  civ 

Names  of  Cases.  Where  Reported.  Pages  in  this  book, 

Stevenson  v .  Magowan 31  F.  R 21s 

Steward  v.  American  Lava  Co 215  U.  S [65 

Stewart  v.  Tenk 32  F.  R 65 

St.  Germain  v .  Brunswick 135  U.  S 246,  252 

Stiles  v.  Rice 29  F.  R 252 

Still  v.  Reading 20  O.  G 487 

Stillwell  v.  M'Pherson 207  F.  R 57 

Stillwell  &  Bierce  Mfg.   Co.  v.  The 

Cincinnati  Gas  Light  &  Coke  Co .  1  Bann.  &  Ard 75 

Stimpson  v.  Pond 2  Curtis 413,  415 

Stimpson  v.  Railroad  Co 4  Howard 292,  308 

Stimpson  v.  Railroads 1  Wallace,  Jr 596,  631 

Stimpson  v.  Rogers 4  Blatch 210,  638 

Stimpson  v.  Woodman 10  Wallace 47 

Stimpson    Computing    Scale    Co.    v. 

W.  F.  Stimpson  Co 104  F.  R 367,  371 

Stirling  Co.  v.  Rust  Boiler  Co 144  F.  R 220 

Stirling    Co.    v.    St.    Louis    Brewing 

Assn 79  F.  R 178 

Stirling  Co.  v.  Standard  Snuff  Co 137  F.  R 239 

Stirrat  v.  Excelsior  Mfg.  Co 61  F.  R 243 

Stitt  v.  Railroad  Co 22  F.  R 91 

St.  Louis  Stamping  Co.  v.  Quinby ...  4  Bann.  &  Ard 217 

St.  Louis  Street,  etc.,  Co.  v.  American 

Street,  etc.,  Co 156  F.  R 29,  56,  255 

Stockholm  t\  Duncan 226  F.  R 622 

Stockland   v.    Russell   Grader    Mfg. 

Co 222  F.  R 463 

Stohlmann  v.  Parker 53  F.  R 29 

Stokes  Bros.  Mfg.  Co.  v.  Heller 56  F.  R 712 

Stonemetz  Mach.  Co.  v.  Brown  Mach. 

Co 46  F.  R 400 

Stonemetz  Mach.  Co.  v.  Brown  Mach. 

Co 57  F.  R 233,  398 

Story  v.  Livingston 13  Peters 836 

Stow  v.  Chicago 3  Bann.  &  Ard 35,  44 

Stow  v.  Chicago 104  U.  S 71 

St.  Paul  Plow  Works  v.  Starling 140  U.  S 367,  369,  576,  597 

Strait  v.  Harrow  Co 51  F.  R 648 

Streat  v.  American  Rubber  Co 115  F.  R 477 

Streat  v.  White 35  F.  R 64 

Stromberg-Carlson,  etc.,  Co.  v.  Amer- 
ican Electric,  etc.,  Co 127  F.  R 787 


('hi  TABLE    OF   CITED    CASES 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Stromberg    Motor    Devices    Co.     v. 

Zenith  Carburetor  Co 220  F.  R 544,  545 

Strowbridge  v.  Lindsay 6  F.  R 801 

Stuart  v.  Thorman 37  F.  R 765 

Stuber  v.  Central  Brass  &  Stamping 

Co 224  F.  R 45 

Sturges  v.  Van  Hagan 6  Fisher 404 

Sturgis  v.  Knapp 33  Vermont 782 

Stutz  v.  Armstrong 25  F.  R 381 

Sub-Target  Gun  Co.  v.  Hollifield  Tar- 
get Practice  Co 175  F.  R 198 

Suddard  v.  American  Motor  Co 103  F.  R 601 

Suddard  v.  American  Motor  Co 163  F.  R 276 

Suffolk  Co.  v.  Hayden 3  Wallace.  . 84,  85,  232,  234,  382,  613 

Sugar  Mfg.  Co.  v.  Yaryan  Mfg.  Co.  .43  F.  R 43,  562 

Sugar  Refinery  Co.  v.  Mathiesson  ...  3  Cliff 836 

Sullivan  v.  Judah 4  Paige  (N.  Y.) 781 

Sullivan  v.  Railroad  Co 94  U.  S 682 

Sundh  Electric  Co.  v.  General  Electric 

Co 204  F.  R 259 

Sundh  Electric  Co.  v.  General  Electric 

Co 217  F.  R 798 

Sundh  Electric  Co.  v.  Interborough 

Rapid  Transit  Co 198  F.  R 60,  69,  75,  148 

Sundh  Electric  Co.   v.   Interborough 

Rapid  Transit  Co 222  F.  R 70 

Sun  Printing  &  Publishing  Assn.  v. 

Edwards 121  F.  R 732 

Superior  Drill  Co.  v.  Ney  Mfg.  Co.  .  .98  F.  R 334 

Superior  Hay  Stacker  Co.   v.   Dain 

Mfg.  Co 208  F.  R 238 

Sutro  Bros.  Braid  Co.  v.  Schloss 44  F.  R 461 

Sutter  v.  Robinson 119  U.  S 252 

Suydam  v.  Day 2  Blatch 346 

Swain  v.  Holyoke  Machine  Co Ill  F.  R 116 

Swift  v.  Jenks 29  F.  R 399 

Swift  v.  Whisen 2  Bond 306 

Sykes  v.  Manhattan  Co 6  Blatch 776 


Taber  v.  Meriden  Britannia  Co 106  F.  R 728 

Tack  Co.  v.  Mfg.  Co 109  U.  S 27,  40 


TABLE   OF   CITED   CASES  <l\ii 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Tannage  Patent  Co.  v.  Adams 77  F.  R 766 

Tannage  Patent  Co.  v.  Donnallan .  .  . 93  F.  R 83 

Tannage  Patent  Co.  v.  Zahn 66  F.  R 132,  215 

Tannage  Patent  Co.  v.  Zahn 70  F.  R ",  1 

Tate  v.  Baltimore  <fe  Ohio  Railroad. .  .  229  F.  R IJ72 

Tatham  v.  Lovvber 4  Blatch 381 ,  Mfci 

Tatum  v.  Gregory 51  F.  R 623 

Taws  v.  Laughlins 70  F.  R 54,  439 

Taylor  v.  Archer 8  Blatch 263,  268 

Taylor  v.  Porter 4  Hill  (N.  Y.) 185,  199 

Taylor  v.  Sawyer  Spindle  Co 75  F.  R 681 

Taylor  Bruner  Co.  v.  Diamond 72  F.  R 83 

T.  B.  Woods  Sons  Co.  v.  Valley  Iron 

Wks 166  F.  R 512 

T.  B.  Woods  Sons  Co.  v.  Valley  Iron 

Works 191  F.  R 96 

T.  B.  Woods  Sons  Co.  v.  Valley  Iron 

Works 198  F.  R 700 

Teese  v.  Huntingdon 23  Howard 531,  627,  631,  686 

Telegraph  Co.  v.  Telephone  Co 61  Vt 192 

Telephone  Cases 126  U.  S.  .  4,  9,  22.  55,  207,  222,  236, 

447 

Temple  Pump  Co.  v.  Mfg.  Co 30  F.  R 238 

Temple  Pump  Co.  v.  Mfg.  Co 31  F.  R 798 

Tennessee  v.  Butler 71  Tenn 190 

Terhune  v.  Phillips 99  U.  S 31,  683 

Terry  Clock  Co.  v.  New  Haven  Clock 

Co 4  Bann.  &  Ard 29 

Terry  Steam  Turbine  Co.   v.   B.   F. 

Sturtevant  Co 204  F.  R 674 

Tesla  Electric  Co.  v.  Scott 97  F.  R 233 

Tesla  Electric  Co.  v.  Scott 101  F.  R 602,  604 

Thacher  v.  Transit  Cons't  Co 234  F.  R 239 

Thatcher  Heating  Co.  v.  Burtis 121  U.  S 40 

Thayer  v.  Hart 20  F.  R 94 

Theberath  v.  Trimming  Co 15  F.  R 18,  119 

The  Baltimore 8  Wallace 602 

The  Barbed  Wire  Patent 143  U.  S 28 

The  Commander-in-Chief 1  Wallace 839,  840 

The  Fair  v.  Kohler  Die  Co 228  U.  S 472 

The  Fire  Extinguisher  Case 21  F.  R 310 

Theodore  W.   Foster  &  Bro.  Co.  v. 

Tilden-Thurbcr  Co 200  F.  R 19,  56,  98 


Clviil  TABLE    OF    CITED    CASKS 

Names  of  Cases.  Wnere  Reported.  Pases  in  this  book; 

The  Santa  Maria   10  Whcaton 736 

The  Three  Friends L66  U.  S 740 

The  Tremolo  Patent 23  Wallace 651,  821 

Thomas  >'.  Harvie's  Heirs 10  Whcaton 728 

Thomas  v.  Perri 205  V.  B 168 

Thomas  v.  Quintard 5  Duer  (N.  Y.) 341 

Thomas  ''.  Rocker  .Spring  Co 77  F.  R 255 

Thomas  &  Sons  Co.  u.  Electric  Por- 
celain Co 114  P.  R 790 

Thompson  v.  Automatic  Fire  Pro- 
tector Co 211  F.R 331 

Thompson  v.  Boisselier 114  U.  S 21 

Thompson  v.  Donnell  Mfg.  Co 40  F.  R 231 

Thompson  a,  Gildersleeve 34  F.  R 231 

Thompson  v.  Utah 170  U.  S 556 

Thompson  v.  Wooster 114  U.  S 288 

Thomson  v.  Citizens'  National  Bank     53  F.  R 185 

Thomson  v.  Weston 19  App.  D.  C 170 

Thomson    Electric    Welding    Co.    />. 

Two  Rivers  Mfg.  Co 63  F.  R 754 

Thomson-Houston    Electric     Co.     v. 

Black  River  Traction  Co 135  F.  R 135,  304 

Thomson-Houston     Electric    Co.     v. 

Bullock  Electric  Co 101  F.  R 474 

Thomson-Houston    Electric    Co.     v. 

Electrose  Mfg.  Co 155  F.  R 674 

Thomson-Houston    Electric    Co.    v. 

Elmira  Ry.  Co 69  F.  R 54 

Thomson-Houston     Electric     Co.     v. 

Elmira  Ry.  Co 71  F.  R 231,  233,  235,  601 

Thomson-Houston    Electric    Co.     v. 

Exeter  Ry.  Co 110  F.  R 763 

Thomson-Houston    Electric    Co.     v. 

Hoosick  Ry.  Co 82  F.  R 233,  784 

Thomson-Houston     Electric    Co.     v. 

H.  W.  Johns  Mfg.  Co 78  F.  R 363 

Thomson-Houston     Electric    Co.     v. 

Illinois  Tel.  Construction  Co  ...  152  F.  R 361 

Thomson-Houston    Electric    Co.     v. 

Jeffrey  Mfg.  Co 101  F.  R 233 

Thomson-Houston    Electric    Co.     v. 

Kelsey    Electric    Ry.    Specialty 

Co 72  F.  R 493 


TABLE    OF   CITED    CASKS  clix 

Names  of  Cases.  \\  here  Reported.  Pages  in  thi 

Thomson-Houston    Electric    Co.     v. 

Kelsey  Ry.  Specialty  Co 75  F.  R 363.    193 

Thomson-Houston     Electric    Co.    v. 

Lorain  Steel  Co 110  F.  R IK, 

Thomson-Houston    Electric    Co.    v. 

Lorain  Steel  Co 117  F.  R 31,   1 16 

Thomson-Houston    Electric    Co.     v. 

Mahar 112  F.  R 707 

Thomson-Houston    Electric    Co.     i>. 

McLean 153  F.  R 208 

Thomson-Houston    Electric    Co.     v. 

Nassau  Electric  R.  Co 98  F.  R :;i 

Thomson-Houston    Electric    Co.     v. 

Nassau  Electric  R.  Co 107  F.  R 2 

Thomson-Houston     Electric    Co.     v. 

Nassau  Electric  Railroad  Co.  ...  112  F.  R 7 1(» 

Thomson-Houston    Electric    Co.     v. 

Ohio  Brass  Co 78  F.  R 751,  761 

Thomson-Houston    Electric    Co.     v. 

Ohio  Brass  Co 80  F.  R 233,  493,  783,  784 

Thomson-Houston    Electric    Co.     v. 

Ohio  Brass  Co 130  F.  R 70 

Thomson-Houston    Electric    Co.     v. 

Rahway  Electric  Co 95  F.  R 53,  246 

Thomson-Houston     Electric    Co.     v. 

Union  Ry.  Co 86  F.  R 233,  241 

Thomson-Houston    Electric    Co.     v. 

Wagner  Electric  Co 130  F.  R 770 

Thomson-Houston    Electric    Co.     v. 

Western  Electric  Co 70  F.  R 53 

Thomson-Houston    Electric     Co.     v. 

Western  Electric  Co 158  F.  R 296 

Thomson-Houston     Electric    Co.     v. 

Winchester  Ave.  Ry.  Co 71  F.  R 54 

Thrall  v.  Poole 89  F.  R 436 

Tibbe  Mfg.  Co.  v.  Heineken 37  F.  R 759 

Tiemann  v.  Kraatz 85  F.  R 21,  26,  46 

Tilghman  v.  Mitchell 9  Blatch 316,  319 

Tilghman  v.  Mitchell 4  Fisher 752,  775 

Tilghman  v.  Proctor 102  U.  S 3,  9,  82,  219,  418 

Tilghman  v.  Proctor 125  U.  S.  .615,   707,  804,  807,    825, 

828,  840 
Time  Saver  Co.  v.  Stamford  Trust  Co .  176  F.  R 5 


Clx  TABLE    OF    CITED    CASES 

Names  of  Cuaes.  w  here  Reported.  Pages  in  this  book. 

Time  Telegraph  Co.  v.  Himmer 19  F.  B 562,  752 

Timken  v.  ( >lin 37  F.  R 94,  722 

Timken  v.  Olin 41  F.  R 615,  617,  630 

Timolal  v.  Franklin  Boiler  Works  ( Jo. .  122  F.  R 681 

Timolat    v.    Philadelphia    Pneumatic 

Tool  Co 123  F.  R 778 

Timolat   v.    Philadelphia    Pneumatic 

Tool  Co 131  F.  R 73 

Tobey  Furniture  Co.  v.  Colby 35  F.  R 776 

Toch  v.  Zibell  Damp  Resisting  Paint 

Co 231  F.  R 90,  218 

Tochw.  Zibell  Damp  Resisting  Co 233  F.  R 83 

Todd  v.  Whittaker 217  F.  R 659 

Toledo  Computing  Scale  Co.  v.  Com- 
puting Scale  Co 208  F.  R 36 

Toledo  Reaper  Co.  v.  Harvester  Co .  .24  F.  R 786 

Tomkinson  v.  Mfg.  Co 23  F.  R 461 

Tompkins  v.  Butterfield 25  F.  R 412 

Tompkins  v.  Gage 5  Blatch 227 

Tompkins  v.  International  Paper  Co .  .  183  F.  R 677,  678 

Tonduer  v.  Chambers 37  F.  R 143,  438 

Toohey  v.  Harding 4  Hughes 423 

Topliff  v.  Topliff 122  U.  S 33.') 

Topliff  v.  Topliff 145  U.  S.  .55,  83,  108,  137,  242,  24s, 

292,  295,  335,  629,  836 

Toppan  v.  Tiffany  Car  Co 39  F.  R 497 

Torrey  v.  Hancock 184  F.  R 96 

Tracy  v.  Torrey 2  Blatch 775 

Trader  v.  Messmore 1  Bann.  &  Ard 254 

Transit  Development  Co.  v.  Cheatham 

Electric  Switch  Co 194  F.  R 622 

Traver  v.  Brown 62  F.  R 561 

Travers  v.  Beyer 26  F.  R 493 

Travers  v.  Cordage  Co 64  F.  R 574 

Travers  v.  Spreader  Co 35  F.  R 765 

Trecothick  v.  Austin 4  Mason 483 

Treibacher-Chemische  Werke,  etc.,  v. 

Roessler  &  Hasslacher  Chemical 

Co 219  F.  R 435 

Trent  v.  Risdon  Iron  &  Locomotive 

Works 102  F.  R 499 

Troy  Iron  &  Nail  Factory  v.  Corning .  .  14  Howard 359,  373 

Troy  Iron  &  Nail  Factory  u.  Corning.  .6  Blatch 810,  833,  836 


TABLE    OF   CITED    CASES  clxi 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Troy  Iron&  Nail  Factory  v.  Corning.  .7  Blatch 603 

Troy  Machinery  Co.  v.  Bunnell 27  F.  R 49 

Truax  v.  Detvveiler 46  F.  R 7<jx 

Truman  v.  Holmes 87  F.  R r>:;t; 

Trussed  Concrete  Steel  Co.  v.  Corru- 
gated Bar  Co 214  F.  R 548 

Trustees  of  Masonic,  etc.,  Fund  v. 
Fountain  Electric,  etc.,  Corpora- 
tion   218  F.  R 567 

Tubular  Rivet  &  Stud  Co.  v.  O'Brien.93  F.  R 362,    I'M 

Tuck  v.  Bramhill 6  Blatch 223,  268,  275 

Tucker  v.  Carpenter 1  Hempstead 780 

Tucker  v.  Spalding 13  Wallace 52,  595 

Tufts  v.  Tufts 3  Woodbury  &  Minot 722 

Turnbull  v.  Plow  Co 6  Bissell 338,  34 1 

Turner  v.  Quincy  Market  Cold  Storage 

Warehouse  Co 225  F.  R 16 

Turner  Brass  Works  v.  Appliance  Mfg. 

Co 164  F.  R 173 

Turner  Brass  Works  v.  Appliance  Mfg. 

Co 203  F.  R 69 

Turrell  v.  Spaeth 3  Bann.  &  Ard 303,  43S 

Turrill  v.  Illinois  Central  R.  R.  Co. .  .20  F.  R 821 

Turrill  v.  Michigan  Southern  R.   R. 

Co 1  Wallace 92,  247,  594 

Tuttle  v.  Claflin 62  F.  R 824 

Tuttle  v.  Claflin 76  F.  R 694,  739,  827 

Tuttle  v.  Matthews 28  F.  R.  .  .  .212,  381,  382,  422,  649 

T.  W.  &  C.  B.  Sheridan  Co.  v.  Robert 

O.  Law  Co 172  F.  R 675 

Twentieth    Century    Motor    Car    & 

Supply  Co.  v.  Holcomb  Co 220  F.  R 148 

Tyler  v.  Boston 7  Wallace 139,  217,  458,  566 

Tyler  v.  Galloway 12  F.  R 270,  277 

Tyler  v.  Hyde.    2  Blatch 405 

Tyler  Co.  v.  Ludlow-Saylor  Co 236  U.  S 475 

Tyler  v.  Savage 143  U.  S 679 


Underfeed   Stoker   Co.    v.   American 

Ship  Windlass  Co 165  F.  R 194 

Underwood  v.  Gerber 149  U.  S 246 


('lxii  TABLE    OP    CITED    CASES 

Names  of  Cases.  when'  Reported.  Pages  in  tbiabook. 

Underwood  Typewriter  Co.  v.  E.  C. 

Steams  &  Co 227  F.  R 622 

Underwood  Typewriter  Co.  r.  Klliotl- 

Fisher  Co 156  F.  R 638,  718,  786 

Underwood  Typewriter  Co.  v.  Elliott- 
Fisher  Co 171  F.  R 711 

Underwood   Typewriter   Co.    v.    Fox 

Typewriter  Co 158  F.  R 464 

Underwood    Typewriter   Co.    v.    Fox 

Typewriter  Co 220  F.  R 806 

Underwood  Typewriter  Co.  v.  Royal 

Typewriter  Co 224  F.  R 433,  435 

Union  Biscuit  Co.  v.  Peters 125  F.  R 55 

Union  Edge  Setter  Co.  v.  Keith 31  F.  R 49 

Union  Edge  Setter  Co.  v.  Keith 139  U.  S 40 

Union  Match  Co.  v.  Diamond  Match 

Co 162  F.  R 138,  442 

Union     Metallic     Cartridge     Co.     v. 

United  States  Cartridge  Co 2  Bann.  &  Ard 436 

Union  Mfg.  Co.  v.  Lounsbury 42  Barbour  (N.  Y.) 371 

Union  Mfg.  Co.  v.  Lounsbury 41  New  York 321 

Union    Paper    Bag    Machine    Co.    v. 

Binney 5  Fisher 747,  765,  770,  775 

Union    Paper    Bag    Machine    Co.    v. 

Crane 1  Bann.  &  Ard 173 

Union    Paper    Bag    Machine    Co.    v. 

Murphy 97  U.  S 440 

Union    Paper    Bag    Machine    Co.    v. 

Newell 11  Blatch 745 

Union    Paper    Bag    Machine    Co.    v. 

Waterbury 39  F.  R 277,  290,  296 

Union  Paper  Collar  Co.  v.  Leland  ...  1  Bann.  &  Ard 49 

Union  Special  Machine  Co.  v.  Mainain.161  F.  R 363 

Union    Steam-Pump    Co.    v.    Battle 

Creek  Steam-Pump  Co 104  F.  R 432,  454 

Union  Stone  Co.  v.  Allen 14  F.  R 424 

Union  Sugar  Refinery  v.  Matthiessen.  .2  Fisher 574 

Union  Switch  &  Signal  Co.  v.  Johnson 

Signal  Co 61  F.  R 364 

Union  Switch  &  Signal  Co.  v.  Phila- 
delphia &  Reading  Railroad  Co.  .68  F.  R 510 

Union  Switch  &  Signal  Co.  v.  Phila- 
delphia &  Reading  Railroad  Co.  .69  F.  R 487,  496 


TABLE    OF    CITED    OASES  clxiii 

Names  of  Cases.  Whore  Reported.  Pugcs  in  thil  book. 

Union  Trust  Co.  v.  Walker  Electric 

Co 122  F.  K 638 

United  Autographic  Register  Co.  v. 

Egry  Register  Co 219  F.  B 171 

United  Blue-Flame,  etc.,  Co.  v.  Silver 

&  Co 128  F.  R 785 

United  Electric  Co.  v.  Creamery  Pack- 
age Mfg.  Co 203  F.  R 794 

United     Nickel     Co.     v.     Electrical 

Works 25  F.  R 360 

United  Nickel  Co.  v.  Pendleton 15  F.  R 440 

United  Nickel  Co.  v.  Railroad  Co 36  F.  R 617,  619 

United  Nickel  Co.  v.  Worthington .  .  .  13  F.  R 489,  504 

United    Printing    Machinery    Co.    v. 

Cross  Paper  Feeder  Co 220  F.  R 37S 

United    Printing    Machinery    Co.    v. 

Cross  Paper  Feeder  Co 227  F.  R 549 

United  Shirt  &  Collar  Co.  v.  Beatt ie  .  .  149  F.  R 83,  96 

United  Shoe  Mach.  Co.  v.  Caunt 134  F.  R 372 

United  Shoe  Mach.  Co.  v.  Duplessis 

Indep.  Shoe  Mach.  Co 133  F.  R 473 

United  Shoe  Mach.  Co.  v.  Duplessis 

Indep.  Shoe  Mach.  Co 148  F.  R 204 

United  Shoe  Mach.  Co.  v.  Duplessis 

Indep.  Shoe  Mach.  Co 155  F.  R 204 

United  States  v.  Allen 101  O.  G 151 

United  States  v.  Anciens  Establisse- 

ments 224  U.  S 196 

United  States  v.  Bell  Telephone  Co .  .  128  U.  S 407,  40S 

United  States  v.  Bell  Telephone  Co .  .  159  U.  S 740 

United  States  v.  Bell  Telephone  Co.  .  167  U.  S 193,  407 

United  States  v.  Berdan  Fire  Arms 

Co 156  U.  S 464,  477 

United  States  v.  Burns 12  Wallace 194,  477 

United  States  v.  Butterworth 3  Mackey 153 

United  States  v.  Colgate 21  F.  R 40S 

United  States  v.  Colgate 32  F.  R 156 

United    States    v.    Commissioner    of 

Patents 7  O.  G 166 

United    States    v.    Commissioner    of 

Patents 220.  G 129 

United    States    v.    Commissioner    of 

Patents 54  O.  G 150 


elxiv  TABLE   OF   CITED    CASES 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

United    States   v.    Commissioner    of 

Patents 104  O.  G 129 

United  States  v.  Delespine's  Heirs.      12  Peters 583 

United  States  v.  Duell 95  O.  G 152,  213 

United  States  v.  Duell 172  U.  S 172 

United    States    v.    Kellogg    Toasted 

Cornflake  Co 222  F.  R 397 

United  States  v.  Marble 2  Mackey 166 

United  States  v.  Morris 2  Bond 414 

United  States  v.  Palmer 128  U.  S 195,  377,  477 

United  States  v.  Samperyac Hemstead's  Circuit  Court  Re- 
ports       730 

United    States    Annunciator    Co.    v, 

Sanderson 3  Blatch 563,  763,  774 

United  States  Bung  Mfg.  Co.  v.  In- 
dependent Bung  Co 31  F.  R 58,  71 

United  States  Consolidated,  etc.,  Co. 

v.  Phoenix,  etc.,  Co 124  F.  R 473 

United    States    Consolidated    Raisin 

Co.  v.  Selma  Fruit  Co 195  F.  R 687 

United  States  Credit  System  Co.  v. 

Indemnity  Co 51  F.  R 4,  683 

United  States  Credit  System  Co.  v. 

Indemnity  Co 53  F.  R 4,  683 

United  States  Electric  Lighting  Co. 

v.  Consolidated     Electric     Light 

Co 33  F.  R 688 

United  States  Envelope  Co.  v.  Transo 

Paper  Co 229  F.  R 475,  476,  802 

United  States  Expansion  Bolt  Co.  v. 

H.  G.  Kroucke  Hardware  Co.  .  .216  F.  R 473,  498 

United  States  Expansion  Bolt  Co.  v. 

Kroucke  Hardware  Co 234  F.  R 674,  675 

United  States  Felting  Co.  v.  Asbestos 

Felting  Co 4  F.  R 545 

United  States  Fire  Escape,  etc.,  Co. 

v.  Joseph  Halstead  Co 195  F.  R 673 

United    States    Frumentum    Co.    v. 

Lauhoff 216  F.  R 626 

United  States  Glass  Co.  v.  Atlas  Glass 

Co 88  F.  R 236 

United  States  Mitis  Co.  v.  Carnegie 

Steel  Co 89  F.  R 218,  584 


TABLE    OF   CITED    CASES  clxv 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

United  States  Mitia  Co.   v.   Detroit 

Steel  &  Spring  Co 122  F.  It 676,  681 

United  States  Mitia  Co.  v.  Midvale 

Steel  Co 135  F.  R 422 

United  States  Mitis  Co.  v.  Midvale 

Steel  Co 131  F.  R 218 

United  States  Packing  Co.  v.  Tripp.  .31  I1'.  R 545 

United  States  Peg-Wood  Co.  v.  B.  F. 

Sturtevant  Co 122  F.  R 92,  221 

United  States  Peg-Wood  Co.  v.  B.  F. 

Sturtevant  Co 125  F.  R.  (p.  378) 236 

United  States  Peg-Wood  Co.  v.  F.  B. 

Sturtevant  Co 125  F.  R.  (p.  382) 258 

United    States   Playing-Card    Co.    v. 

Spalding 92  F.  R 781,  796 

United    States    Playing-Card    Co.    i>. 

Spalding 93  F.  R 798 

United  States  Seeded  Raisin  Co.  v.  * 

Phcenix  Seeding  Co 124  F.  R 476 

United  States  Stamping  Co.  v.  Jew- 

ett 7  F.  R 323 

United     States     Stamping     Co.     v. 

King 4  Bann.  &  Ard 767 

United     States     Stamping     Co.     v. 

King 17  Blateh 308 

United  States  Whip  Co.  v.  Hassler .  .  .  134  F.  R 300 

United    Wireless    Telegraph    Co.    v. 

National      Electric       Signalling 

Co 198  F.  R 487 

Universal  Adding  Mach.  Co.  v.  Comp- 

tographCo 146  F.  R 110 

Universal  Caster  &  Foundry  Co.  v. 

M.  B.  Schenck  Co ....!..  .165  F.R 288 

Universal  Savings,  etc.,  Co.  v.  Stone- 
burger 113  F.  R 781 

Universal  Winding  Co.  v.  Willimantic 

Linen  Co 82  F.  R 77,  91,  92 

Untermeyer  v.  Freund 37  F.  R 22 

Untermeyer  v.  Freund 58  F.  R 77,  633,  807,  820 

Upson  Nut  Co.  v.   H.  Chapin  Sons 

Co 117  F.  R 63 

Upton  v.  Wayland 36  F.  R 755 

Urner  v.  Kayton 17  F.  R 829 


CIXVI  TABLE    OF   CITED    CASES 


Names  of  Cases.                                                     Where  Reported.               Pages  in  this  book. 
Vacuum  Cleaner  Co.  v.  American  Ro- 
tary Valve  Co 208  F.  R 674 

Vacuum  Cleaner  Co.  v.  Dunn 189  F.  R 68G 

Vacuum   Cleaner  Co.   v.   Innovation 

Electric  Co 234  F.  R 718 

Vacuum  Engineering  Co.  v.  Dunn.  .  .209  F.  R 60,  69,  547 

Valona-Marchiony  Co.  v.  Marchiony .  207  F.  R 682 

Van  Brunt  v.  LaCrosse  Plough  Co.  .  .208  F.  R 809,  817 

Vanbuskirk  v.  Hartford   Fire    Insur- 
ance Co 14  Connecticut 338 

Vance  v.  Campbell 1  Black.  .  .  .234,  434,  503,  556,  685 

Vance  v.  Campbell. 1  Fisher 99,  103 

Van  Epps  v.   United   Box   Board  & 

Paper  Co 143  F.  R 73,  79,  218 

Van  Hook  v.  Pendleton 1  Blatch 681,  771 

Van  Ness  v.  Layne 213  F.  R 248 

Vannini  v.  Paine 1  Har.  (Del.) 193 

Van  Orden  v.  Nashville 67  F.  R 483 

Van  Ostrand  v.  Reed 1  Wendell  (N.  Y.) 343 

Varick  v.  Briggs 6  Paige  (N.  Y.) 340 

Vattier  v.  Hinde 7  Peters 651,  702 

Veneer    Machinery    Co.     v.    Grand 

Rapids  Chair  Co 227  F.  R 226,  257,  442 

Ventilated  Cushion  &  Spring  Co.  v. 

D'Arcy 232  F.  R 67,  255 

Vermilya  v.  Erie  Railroad  Co 89  F.  R 768 

Vermont     Farm     Machine     Co.     v. 

Marble 20  F.  R 158 

Victor   Talking    Mach.    Co.    v.    Am. 

Graphophone  Co 140  F.  R 85 

Victor   Talking    Mach.   Co.    v.   Am. 

Graphophone  Co 145  F.  R 107,  177 

Victor   Talking    Mach.    Co.    v.    Am. 

Graphophone  Co 151  F.  R 255 

Victor   Talking    Mach.    Co.    v.    Am. 

Graphophone  Co 189  F.  R 51,  367 

Victor  Talking  Mach.  Co.  v.  Duplex 

Phonograph  Co 177  F.  R.  .  .  .' 107,  127 

Victor  Talking  Mach.  Co.  v.  Hoschke.  158  F.  R 206 

Victor  Talking  Machine  Co.  v.  Straus.  171  F.  R 797 

Victor  Talking  Machine  Co.  v.  Straus.  230  F.  R 393 


TABLE    OF    CITED    CASES  clxVU 

Names  of  Caaea.  Where  Reported.  Pagee  in  this  book. 

Victor    Talking    Mach.    Co.    v.    The 

Fair 123  F.  R 193,  362,  467,  468 

Vinton  v.  Hamilton 104  U.  S 27 

Vogler  v.  Semple 7  Bissell I  }i  i 

Voightman  v.  Perkinson 138  F.  It ss 

Voightman  v.  Seely 176  F.  R 653 

Voightman  v.  Weis  &  Ridge  Cornice 

Co 133  F.  R 463 

Voightman  v.  Weis  &  Ridge  Cornice 

Co 148  F.  R 55 

Von  Schmidt  v.  Bowers 80  F.  It 87,  109 

Vose  v.  Singer 4  Allen  (Mass.) 354 

Vrooman  v.  Penhallow 179  F.  R 62,  133,  256 

Vulcanite   Paving   Co.    v.    Pavement 

Co 36  F.  R 616 

Vulcanized  Fiber  Co.  v.  Taylor 49  F.  R 31 

W 

Wade  v.  Lawder 165  U.  S 469 

Wade  v.  Metcalf 129  U.  S 197 

Wagner  Typewriter  Co.  v.  Watkins   .  84  F.  R 370 

Wagner    Typewriter    Co.    v.    F.    S. 

Webster  Co 144  F.  R 363 

Wagner  Typewriter  Co.  v.   Wyckoff, 

Seamans  &  Benedict 151  F.  R 56 

Waite  v.  Chair  Co 45  F.  R 676 

Wales  v.  Waterbury  Mfg.  Co 101  F.  R 739,  819 

Walker  v.  Hawxhurst 5  Blatch 411 

Walker  Patented  Pivoted  Bin  Co.  v. 

Miller 146  F.  R 834 

Wall  v.  Leek 61  F.  R 683 

Wall  ik  Leek 66  F.  R 2 

Wallace  v.  Holmes 9  Blatch 493 

Wallace  v.  Noyes 13  F.  R 29 

Waltham  Watch  Co.  v.  Keene 202  F.  R 397 

Ward  v.  County  of  Hartford 12  Connecticut 488 

Ward  v.  Plow  Co 14  F.  R 29 

Ward  Baking  Co.  v.  Weber  Bros 230  F.  R 719,  720 

Waring  Electric  Co.  v.  Edison  Elec- 
tric Light  Co 69  F.  R 205 

Warner  Instrument  Co.  v.  Stewart  & 

Clark  Mfg.  Co 185  F.  R 37 


Clxviii  TABLE    OF   CITED    (ASKS 

Names  of  Cases.  Where  Reported.  Pages  in  iliis  book. 

Warren  Bros.  v.  City  of  New  York 187  F.  R 709 

Warren  Bros.  v.  City  of  Owosso 166  F.  R 79,  107 

Warren     Featherbone     Co.     v.     Am. 

Featherbone  Co 133  F.  R 55 

Warren  Featherbone  Co.   v.   Warner 

Bros.  Co 92  F.  R 6SS 

Warren  S.  P.  Co.  v.  Blake  &  Knowles 

S.  P.  Works 163  F.  R 219 

Warren  v.  Keep 155  U.  S 736,  808 

Washburn  v.  Gould 3  Story.  .  .  .272,  307,  334,  341,  597 

Washburn    &     Moen    Mfg.    Co.    v. 

Barbed  Wire  Co 33  F.  R 49 

Washburn    &    Moen    Mfg.    Co.    v. 

Barbed  Wire  Fence  Co 22  F.  R 769 

Washburn    &     Moen    Mfg.     Co.    v. 

Barbed  Wire  Fence  Co 42  F.  R 369,  372 

Washburn    &    Moen    Mfg.    Co.    v. 

Freeman  Wire  Co 41  F.  R 372 

Washburn    &     Moen    Mfg.     Co.    v. 

Haish 4  Bann.  &  Ard 416 

Washburn    &    Moen    Mfg.    Co.    v. 

Haish 4  F.  R 325,  347 

Washburn    &    Moen    Mfg.    Co.    v. 

Scutt  Co 22  F.  R 769 

Washer  Co.  v.  Cramer 169  F.  R 238,  431 

Washing  Machine  Co.  v.  Earle 3  Wallace,  Jr 346 

Washing-Machine       Co.      v.       Tool 

Co 20  Wallace 243 

Waterbury  Brass  Co.  v.  Miller 9  Blatch 423,  428 

Waterbury  Brass  Co.   v.   New  York 

Brass  Co 3  Fisher 564,  566,  595 

Waterman  v.  Mackenzie 138  U.  S.  .325,  347,  348,  349,  357, 

479,  484,  485,  676 

Waterman  v.  Thomson 2  Fisher 78 

Waterman  v.  Shipman 55  F.  R.  .  .  .349,  373,  374,  486,  571 

Waterman  v.  Shipman 130  N.  Y 469 

Water-Meter  Co.  v.  Desper 101  U.  S 434 

Watson  v.  Railway  Co 132  U.  S 21 

Watson  v.  Stevens 47  F.  R 53 

Watt  v.  Starke 101  U.  S 715 

Wayne  v.  Winter 6  McLean 575 

Wayne  Mfg.  Co.  v.  Benbow-Brammer 

Mfg.  Co 168  F.  R 55,  256,  454 


TABLE    OF   CITED    (ASKS  cbdx 

Names  of  Cases.  Where  Reported.  l'ages  in  this  book. 

Wayne   Mfg.   Co.   v.   Coffield   Motor 

Washer  Co 227  F.  It.  .  .  141,  142,  218,  291,  568 

W.  B.  Scaife  &  Sons  Co.  v.  Falls  City 

Woolen  Mills  Co 209  F.  R I.,  I 

Weatherhead  v.  Coupe 147  U.  S 234,  433 

Webb  v.  Goldsmith 127  F.  R iso 

Weber  v.   Automobile  &   Accessories 

Co 190  F.  It 435 

Weber  v.  Virginia 103  U.  S 1 92 

Weber  Electric  Co.  v.  National  Gas  & 

Electric  Fixture  Co 204  F.  It 59 

WTeber  Electric  Co.  v.  Union  Electric 

Co 226  F.  R 256 

WTebster  v.   New    Brunswick    Carpet 

Co 1  Bann.  &  Ard 110 

Webster  Loom  Co.  v.  Higgins 4  Bann.  &  Ard 93 

Webster  Loom  Co.  v.  Higgins 39  F.  It 827 

Webster  Loom  Co.  v.  Higgins 43  F.  R 824 

Weddeburn  v.  Bliss 12  App.  D.  C 149,  150 

Weed  Chain  Tire  Grip  Co.  v.  Cleve- 
land Chain  &  Mfg.  Co 196  F.  R 457 

Weir  v.  Morden 125  U.  S 27 

Weisgerber  v.  Clowney 131  F.  R 79 

Welling  v.  Crane 14  F.  R 31 

Welling  r.  La  Bau 35  F.  R 627 

Welling  v.  Trimming  Co 2  Bann.  &  Ard 798 

Wellman  v.  Midland  Steel  Co 106  F.  R 237 

Wells  v.  Gill 6  Fisher 748,  767,  774 

Welsbach  Light  Co.  v.  American  In- 
candescent Lamp  Co 98  F.  R 89 

Welsbach  Light  Co.  v.  Apollo  Incan- 
descent Gaslight  Co 96  F.  R 207 

Welsbach   Light   Co.   v.    Benedict   & 

Burnham  Mfg.  Co 82  F.  It 755 

Welsbach  Light  Co.  v.  Cosmopolitan 

( iasUght  Co 100  F.  R 65,  579,  765 

Wrelsbach  Light  Co.  v.  Cosmopolitan 

Light  Co 104  F.  R 65,  783 

Welsbach  Light  Co.  v.  Freeman 100  F.  R 491 

Welsbach  Light  Co.  v.  Sunlight  Lamp 

Co 87  F.  R 436,  441,  446,  458 

Wende  v.  Horine 191  F.  R 118,  157,  325 

Wende  v.  Horine 225  F.  R 118 


clxx  TABLE    OF   CITED   (ASKS 

Names  of  Casey.  Where  Reported.  Pages  in  this  book. 

Werk  v.  Parker 231  F.  R 570 

Werner  v.  King 96  U.  S 438 

Wessell    v.    United    Mattress    Mach. 

Co 139  F.  R 444 

West  v.  Barnes 2  Dallas 007 

West  v.  Rae 33  F.  R 084 

West  Publishing  Co.  v.  Co-operative 

Publishing  Co 53  F.  R 788 

Westcott  v.  Rude 19  F.  R 617,  019,  020 

Western   Electric   Co.    v.    Anthracite 

Telephone  Co 100  F.  R 711 

Western   Electric   Co.    v.    Anthracite 

Telephone  Co 113  F.  R 711 

Western  Electric  Co.  v.  Capital  Tel. 

&  Tel.  Co 80  F.  R 84,  431 

Western    Electric    Co.    v.    Citizens' 

Telephone  Co 100  F.  R 205 

Western  Electric  Co.  v.  Fowler 177  F.  R 159 

Western  Electric  Co.  v.  Home  Tele- 
phone Co 85  F.  R 00,  233,  503 

Western  Electric  Co.  v.  La  Rue 139  U.  S 103,  231,  431,  430 

Western  Electric  Co.  v .  North  Electric 

Co 135  F.  R.  .  .  .50,  209,  084,  085,  696 

Western  Electric  Mfg.  Co.  v.  Odell  .  .  18  F.  R 22 

Western  Electric  Co.  v.  Sperry  Elec- 
tric Co 58  F.  R 088 

Western  Electric  Co.  v.  Williams- 
Abbott  Electric  Co 83  F.  R 642,  759,  760 

Western  Electric  Co.  v.  Williams- 
Abbott  Electric  Co 108  F.  R 447,  719,  734 

Western  Engineering  &  Locomotive 
Works  v.  Risdon  Iron  &  Loco- 
motive Works 174  F.  R 254 

Western  Glass  Co.  v.  Schmertz  Wire- 
Glass  Co 185  F.  R 400 

Western  Glass  Co.  v.  Schmertz  Wire- 
Glass  Co 226  F.  R 812,  828 

Western  Telephone  Construction  Co. 

v.  Stromberg 66  F.  R 548,  701 

Western     Telephone     Mfg.     Co.     v. 

American  Electric  Telephone  Co.  137  F.  R 498,  099 

Western     Telephone     Mfg.     Co.     v. 

American  Electric  Telephone  Co.141  F.  R 498,  099 


TABLE    OF   CITED    CASES  clxxi 

Names  of  Caa  a.  Where  Reported.  Pages  in  this  book. 

Western  Tube  Co.  v.  Rainer 156  F.  R 32,  83,  435 

Western    Union    Telegraph    Co.    v. 

American  Bell  Telephone  Co. .  .  .  105  F.  R 7 Id 

Western     Union    Telegraph    Co.    v. 

Telegraph  Co 25  F.  R 768 

Western     Wheeled    Scraper    Co.     v. 

Gahagan 152  F.  R 473 

Westervelt  v.  Library  Bureau US  F.  R 657 

Westinghouse  v.  Air-Brake  Co 2  Bann.  &  Ard 236 

Westinghouse  ;'.  Air-Brake  Co 59  F.  R 29 

Westinghouse  v.  Boyden  Brake  Co. .  .66  F.  R 258 

Westinghouse      v.      Boyden      Brake 

Co 170  U.  S.  .  . 236,  242,  424,  437,  441 

Westinghouse  v.  Carpenter 43  F.  R 786,  795 

Westinghouse  v.  Duncan 66  O.  G 172 

Wrestinghouse  v.  Edison  Electric  Light 

Co 63  F.  R 252 

WTestinghouse  v.  Gas  Co 43  F.  R 75 

Westinghouse     v.     New     York     Air- 
Brake  Co 115  F.  R 813 

Westinghouse      Air-Brake      Co.       v. 

Burton  Stock  Car  Co 77  F.  R 774 

Westinghouse  Air-Brake  Co.  v.  Car- 
penter  32  F.  R 779 

Westinghouse  Air-Brake  Co.  v.  Chi- 
cago Brake  &  Mfg.  Co 85  F.  R.  .  185,  189,  331,  332,  337,  339, 

344,  345 

Westinghouse      Air-Brake      Co.      v. 

Christensen  Engineering  Co ...  .  103  F.  R 706 

Westinghouse      Air-Brake      Co.      v. 

Christensen  Engineering  Co ....  113  F.  R 710 

Westinghouse      Air-Brake      Co.      v. 

Christensen  Engineering  Co 121  F.  R 764,  801 

Westinghouse      Air-Brake      Co.      v. 

Christensen  Engineering  Co 126  F.  R 700,  798 

WCstinghouse       Air-Brake       Co.    v. 

Christensen  Engineering  Co 128  F.  R 73 

Westinghouse      Air-Brake      Co.      v. 

Great  Northern  Ry.  Co 86  F.  R 772 

Westinghouse      Air-Brake      Co.      v. 

Great  Northern  Ry.  Co 88  F.  R 73 

Westinghouse      Air-Brake      Co.      v. 

New  York  Air-Brake  Co Ill  F.  It 681,  682,  694 


Clxxii  TABLE   OF   CITED   CASES 

.\;mirs  of  Cases.  Where  Reported.  Pages  in  this  book. 

Westinghouse      Air-Brake      Co.      v. 

New  York  Air-Brake  Co 112  F.  R 134,  464 

Westinghouse      Air-Brake      Co.      v. 

New  York  Air-Brake  Co 119  F.  R 425 

Westinghouse      Air-Brake      Co.      v. 

New  York  Air-Brake  Co 140  F.  R 738 

Westinghouse  Electric  &  Mfg.  Co.  v. 

Allis-Chalmers  Co 176  F.  R .502 

Westinghouse  Electric  &  Mfg.  Co.  v. 

American  Transformer  Co 121  F.  R 763 

Westinghouse  Electric  &  Mfg.  Co.  v. 

Beacon  Lamp  Co 95  F.  R 13,  79,  103 

Westinghouse  Electric  &  Mfg.  Co.  v. 

Catskill  Co 94  F.  R 4 

Westinghouse  Electric  &  Mfg.  Co.  v. 

Catskill  Co 121  F.  R 95 

Westinghouse  Electric  &  Mfg.  Co.  v. 

Condit  Electric  &  Mfg.  Co 159  F.  R 642 

Westinghouse  Electric  &  Mfg.  Co.  v. 

Condit  Electric  &  Mfg.  Co 194  F.  R 256 

Westinghouse  Electric  &  Mfg.  Co.  v. 

Jefferson,  etc.,  Co 128  F.  R 543 

Westinghouse  Electric  &  Mfg.  Co.  v. 

New  England  Granite  Co 103  F.  R 46 

Westinghouse  Electric  &  Mfg.  Co.  v. 

Ohio  Brass  Co 186  F.  R 161 

Westinghouse  Electric  &  Mfg.  Co.  v. 

Roberts 125  F.  R 88,  760 

Westinghouse  Electric  &  Mfg.  Co.  v. 

Royal  Weaving  Co 115  F.  R 766 

Westinghouse  Electric  &  Mfg.  Co.  v. 

Sangamo  Electric  Co 128  F.  R 798,  800 

Westinghouse  Electric  &  Mfg.  Co.  v. 

Saranac     Lake     Electric     Light 

Co 108  F.  R 68,  72,  95,  107,  116 

Westinghouse  Electric  &  Mfg.  Co.  v. 

Stanley  Electric  Mfg.  Co 115  F.  R 290,  292 

Westinghouse  Electric  &  Mfg.  Co.  v. 

Stanley  Electric  Mfg.  Co 116  F.  R 474 

Westinghouse  Electric  &  Mfg.  Co.  v. 

Stanley  Electric  Mfg.  Co 117  F.  R 543 

Westinghouse  Electric  &  Mfg.  Co.  v. 

Stanley  Electric  Mfg.  Co 121  F.  R 475 


TABLE    OF    CITED    CASES  clxxiii 

Names  of  Cases.  Where  Reported.  Page 

Westinghouse  Electric  &  Mfg.  Co.  v. 

Stanley  Instrument  Co 133  F.  R 89,  '.«»,  710 

Westinghouse  Electric  &  Mfg.  Co.  v. 

Stanley  Instrument  Co 138  F.  R 205 

Westinghouse  Electric  &  Mfg.  Co.  v. 

Toledo  P.  C.  &  L.  Ry.  Co 172  F.  R 249,  568 

Westinghouse  Electric  &  Mfg.  Co.  v. 

Triumph  Electric  Co 97  F.  R IS 

Westinghouse  Electric  «fe  Mfg.  Co.  v. 

Wagner  Electric  Mfg.  Co 129  F.  R 254 

Westinghouse  Electric  <fc  Mfg.  Co.  v. 

Wagner  Electric  Mfg.  Co 218  F.  R 7;;s 

Westinghouse  Electric  &  Mfg.  Co.  v. 

Wagner  Electric  Mfg.  Co 225  U.  S 813,  817 

Westinghouse  Machine  Co.  v.  General 

Electric  Co 207  F.  R 88 

Westmoreland  Specialty  Co.  v.  Hogan.167  F.  R 218 

Weston  v.  White 13  Blatch 178 

Weston  Electrical  Inst.  Co.   v.   Em- 
pire Electrical  Co 131  F.  R 121 

Weston  Electrical  Inst.  Co.  v.  Empire 

Electrical  Co 13G  F.  R 121,  551 

Weston  Electrical  Inst.  Co.  v.  Empire 

Electrical  Co 155  F.  R 629 

Weston  Electrical  Inst.  Co.  v.  Empire 

Electrical  Co 166  F.  R 502,  504 

Weston  Electrical  Instrument  Co.  v. 

Stevens 119  F.  R 215 

Weston      Electrical      Inst.      Co.      v. 

Stevens 134  F.  R 300 

Weston  Electrical  Inst.  Co.  v.  Vallee 

Bros.  Co 145  F.  R 641 

WethereU  v.  Keith 27  F.  R 94 

Wetherell  v.  Zinc  Co 6  Fisher 321,  335,  366 

Wetherill  v.  Zinc  Co 1  Bann.  &  Ard . .  796,  799,  807.  825 

Wheaton  v.  Kendall 85  F.  R 95,   159 

Wheeler  v.  McCormick 8  Blatch <>-r>7 

Wheeler  v.  McCormick 11  Blatch 85,  234,  786 

Wheeler  v.  Reaper  Co 10  Blatch 99,  437 

Whipple  v.  Hutchinson 4  Blatch 782,  795,  799 

Whipple  v.  Mfg.  Co 4  Fisher 564 

Whipple  v.  Miner 15  F.  R 158 

Whitcomb  v.  Coal  Co 47  F.  R 53,  295,  305,  r>n\) 


('lxxiv  TABLE    OF    CITED    CASKS 

Names  (if  Cases.  Where  Reported.  Pages  in  this  l»i<>k. 

White  v.  Dunbar 119  U.  S 240,  252,  293,  303 

White  P.  Hunter 47  F.  R 751 

White  p.  Lee 5  Bann.  &  Ard 3(59 

White  v.  Lee 14  F.  R 35,  366 

White  v.  Rankin 144  U.  S 4(59,  472 

White  v.  Surdam 41  F.  R 751 

White  p.  Walbridge 46  F.  R 434,  764,  786 

Whitely  v.  Fadner 73  F.  R 463 

Whitely  v.  Swayne 4  Fisher 292 

Whitford  v.  Clark.County 119  U.  S 591 

Whiting  p.  Graves 3  Bann.  &  Ard 326,  354 

Whiting  v.  The  Bank  of  the  United 

States 13  Peters 728,  729 

Whiting  Safety  Catch  Co.  v.  Western 

Wheeled  Scraper  Co 148  F.  R 502 

Whitney  v.  B.  &  A.  R.  Co 50  F.  R 267 

Whitney  v.  Burr 115  111 326 

Whitney  v.  Mowry 3  Fisher 733 

Whitney  p.  Mowry 4  Fisher 103 

Whitson  v.  Phonograph  Co 18  App.  D.  C 362 

Whittall  v.  Lowell  Mfg.  Co 79  F.  R 139 

Whittemore  v.  Cutter 1  Gallison 624,  631 

Wickelman  v.  A.  B.  Dick  Co 88  F.  R 32,  83 

Wicke  v.  Kleinknecht 1  Bann.  &  Ard 362 

Wickersham  v.  Singer 1  McArthur's  Patent  Cases.  .  .  .    108 

Wickersham's  Case 4  O.  G 315 

Wickes  v.  Lockwood 65  F.  R 95 

Wicks  v.  Stevens 2  Bann.  &  Ard 292 

Wickshire  v.  Wire  Fabric  Co 41  F.  R 718,  791 

Wilbur  v.  Beecher 2  Blatch 628 

Wilch  v.  Phelps 14  Neb 190 

Wilcox  v.  Jackson 13  Peters 781 

Wilcox  &  Gibbs  Sewing  Mach.  Co. 

v.  Sherborne.  ) 123  F.  R 726 

Wilcoxen  v.  Bowles 1  Louisiana  An'l 335 

Wilder  v.  Kent 15  F.  R 361 

Wilder  v.  McCormick 2  Blatch 518,  519,  522,  523 

Wilgus  v.  Van  Sickle 99  F.  R 753 

Wilkin  v.  Covel 46  F.  R 240 

Wilkins  v.  Ellett 108  U.  S 482 

Wilkins  v.  Jordan 3  Washington 778 

Wilkins    Shoe-Button    Fastener    Co. 

v.  Webb 89  F.  R 230,  493,  511,  557 


TABLE    OF   CITED    (ASKS  clxXV 

Names  of  Ca9es.  Where  Reported.  PagCH  in  this  book. 

William   13.   Mershon  &  Co.  v.   Bay 

City  Box  &  Lumber  Co 189  F.  R 54,   1  is 

William    B.    Schaife   &   Sons   Co.    v. 

Falls  City  Woolen  Mills 209  F.  R 226,  2  19 

Williames  v.  Barnard 41  F.  R I. ;  1 

Williames  v.  McNeely 64  F.  R 277 

Williames  v.  McNeely 77  F.  R (.01 ,  62  1 

William  Mann  Co.  v.  Hoffmann 104  F.  R Ill 

William  R.  Thropp  &  Sons  Co.  v.  De 

Laski  &  Thropp,  etc.,  Co 226  F.  R 62 

Williams  v.  American  String  Wrap- 
per Co 86  F.  R 59 

Williams  v.  Boston  &  Albany  Rail- 
road Co 4  Bann.  &  Ard 126 

Williams  v.  Leonard 9  Blatch 811 

Williams  v.  McNeely 56  F.  R 763 

Williams  v.  Rubber  Shoe  Co 49  F.  R 254,  255 

Williams  v.  Rubber  Shoe  Co 54  F.  R 59 

Williams  v.  Steam  Gauge  &  Lantern 

Co 47  F.  R 138 

Williams  v.  Stolzenbach 23  F.  R 434 

Williams  Calk  Co.  v.  Kemmerer 145  F.  R 19 

Williams  Patent  Crusher  Co.  v.  Kin- 

sey  Mfg.  Co 205  F.  R 674 

Williams  Patent  Crusher  Co.  v.  St. 

Louis  Pulverizer  Co 104  F.  R -Mil 

Willimantic     Linen     Co.     v.     Clark 

Thread  Co 24  F.  R 723 

Willimantic    Thread    Co.    v.    Clark 

Thread  Co 27  F.  R 621 

Willis  v.  McCullen 29  F.  R 494 

Willis  v.  Miller 121  F.  R ">71 

Wills  v.  Scranton  Cold  Storage,  etc., 

Co 153  F.  R 685 

Wilson  v.   American   Circular  Loom 

Co 187  F.  R 380 

Wilson  v.  Barnum 8  Howard 739 

Wilson  v.  Chickering 14  F.  R 484 

Wilson  v.  Consolidated  Store  Service 

Co 88  F.  R 760 

Wilson  v.  Coon 18  Blatch 214,  286,  2SS,  581 

Wilson  v.  Fire  Alarm  Co 151  Mass 349 

Wilson  v.  Fire  Alarm  Co 52  O.  G 194 


clxXVl  TABLE    OF   CITED    CASES 

Names  of  Cases.  when-  Reported.  in  this  book. 

Wilson  p.  Janes 3  Blatch 596 

Wilson  v.  Keeley 43  O.  G 712 

Wilson  p.  Mfg.  Co 12  F.  R U2 

Wilson  p.  Rousseau 4  Howard.  .298,  315,  316,  318,  320, 

336,  347,   179 

Wilson  p.  Sandford 10  Howard 409 

Wilson  p.  School  District. 32  New  Hampshire 488 

Wilson  p.  Sherman 1  Blatch 709 

Wilson  v.  Simpson 9  Howard 321,  495 

Wilson  v.  Stollcy 3  McLean 300 

Wilson  p.  Stolley 4  McLean 359,  652 

Wilson  v.  Turner Taney's     Circuit      Court      De- 
cisions  315,  316 

Wilson  &  Willard  Co.  p.  Bole 227  F.  R 90 

Wilton  p.  Railroad  Co 1  Brightly's  Federal  Digest.  .        102 

Winans  v.  Denmead 15  Howard 58,  247,  259,  429 

Winans  v.  Railroad  Co 21  Howard 200 

Winchester   Arms    Co.    p.    American 

Buckle  Co 54  F.  R 787 

Winchester    Arms    Co.    v.    American 

Cartridge  Co 02  F.  R 812 

Winchester   Repeating   Arms   Co.    p. 

Buengar 199  F.  R 390 

Winchester   Repeating   Arms  Co.   p. 

Olmstead 203  F.  R 784 

Windle  v.  Parks  &  Woolson   Mach. 

Co 134  F.  R 240 

Window  Glass  Machine  Co.  p.  Brook- 

ville  Glass  &  Tile  Co 229  F.  R 009,  071 

Winfrey  v.  Gallatin 72  Mo.  App 330 

Winkler  p.  Studebaker  Mfg.  Co 105  F.  R 353 

Winner  Snow 19  F.  R 411,  413,  414 

Wintermute  v.  Redington 1  Fisher 353 

Wirt  p.  Brown 30  F.  R 798 

Wirt  p.  Hicks 40  F.  R 642,  745,  780 

Wiscott  v.  Agricultural  Works 1 1  F.  R 354 

Wise  p.  Allis 9  Wallace 532 

Wise  v.  Railway  Co 33  F.  R 079 

Wisner  v.  Grant 5  Bann.  &  Ard 227 

Wisner  p.  Grant 7  F.  R 304 

Withington-Cooley  Mfg.  Co.  v.  Kin- 
ney  68  F.  R 381 

Wold  p.  Thayer  &  Chandler 148  F.  R 140 


TABLE    OF   CITED    CASES  clxXVU 

Names  of  Cases.  Where  Reported.  Pages  in  thifl  l»",k 

Wolff  v.  Du  Pont 122  F.  R 589 

Wollensak  v.  Reiher 115  U.  S 295,  583,  692 

Wollensak  v.  Sargent 33  F.  R ;:,.", .  7gg 

Wollensak  v.  Sargent 41  F.  R 252 

Wollensak  v.  Sargent 151  U.  S 51 ,  296 

Wood  v.  Mill  Co 4  Fisher 93 

Wood  v.  Railroad  Co 2  Bissell .   321 

Wood  v.  Underhill 5  Howard .   217 

Wood  v.  Wells 6  Fisher 370 

Woodard  v.  Gas  Stove  Co 68  F.  R 753,  768 

Woodbridge  v.  Perkins 3  Day  (Connecticut) 338 

Woodmanse  &   Hewitt    Mfg.    Co.   v. 

Williams 68  F.  R 681,  682 

Wood-Paper  Patent 23  Wallace 302,  372 

Woodruff  v.  Barney 2  Fisher 605 

Woods  Sons  Co.  v.  Valley  Iron  Works  166  F.  R 512 

Woodward  v.  Boston  Lasting  Mach. 

Co 63  F.  R 737 

Woodward  v.  Lasting  Mach.  Co 60  F.  R 546 

Woodward  Co.  v.  Hurd 232  U.  S 793 

Woodworth  v.  Cook 2  Blatch 336 

Woodworth  v.  Curtis 2  Woodbury  &  Minot.  .320,  321,  359 

Woodworth  v.  Edwards 3  Woodbury  <fe  Minot.  .311,  497,  749 

Woodworth  v.  Hall 1  Woodbury  &  Minot 305 

Woodworth  v.  Morrison 1  Holmes 458 

Woodworth  v.  Rogers 3  Woodbury  &  Minot.  .778,  780,  799 

Woodworth  v.  Stone 3  Story 305,  307 

Woodworth  v.  Weed 1  Blatch 370,  769 

Woonsocket  Rubber  Co.  v.  Candee.  .23  F.  R 35 

Wooster  v.  Handy 21  F.  R 722 

Wooster  v.  Handy 23  F.  R 602,  728 

Wooster  v.  Machine  Co 4  Bann.  &  Ard 771 

Wooster  v.  Marks 17  Blatch 491 

Wooster  v.  Sidenberg 13  Blatch 320 

Wooster  v.  Simonson 16  F.  R 620 

Wooster  v.  Simonson 20  F.  R 617 

Wooster  v.  Taylor 14  Blatch 808 

Worley  v.  Tobacco  Co 104  U.  S 114,  148 

Worswick  Mfg.  Co.  v.  Buffalo 20  F.  R 04 

Wortendyke  v.  White 2  Bann.  &  Ard 360,  769 

Wright  v.  Bales 2  Black 508,  556 

Wright  v.  Brownlee 212  F.  R 96 

Wright  v.  Postel 44  F.  R 108 


Clxxviii  TABLE    OF   CITED    CASES 

Names  of  Cases.  Where  Reported.  Pages  in  this  book. 

Wright  v.  Elandel 8  F.  K 337,  340 

Wright  v.  Vocalion  Organ  Co MS  F.  R 332 

Wright  r.  Wilson 11   Richardson  (8.  C.  Law  Re- 
ports)       343 

Wright  v.  Yuengling   155  U.  S 40,  234,  240,  433 

\\  right  Co.  v.  Herring-Curtis  Co. . .  .21 1  F.  R »">7 

Wright  it  Colton  Wire-Cloth  Co.  v. 

Wire-Cloth  Co 07  F.  R 231 

Writing   Mach.    Co.    v.    Book-Type- 
writer Co 108  F.  R 444,  447 

Writing  Much.  Co.  v.  Klliott  &  Hatch 

Co 100  F.  R 240 

W.   S.   Tyler  Co.   v.    Ludlbw-Saylor 

Wire  Co .230  U.  S 475 

Wurts  p.  Harrington 10  App.  D.  C 170 

Wurts  v.  Harrington 79  O.  G 108,  171 

W.  W.  Sly  Mfg.  Co.  v.  Central  Iron 

Works 201  F.  R 074 

W.  W.  Sly  Mfg.  Co.  v.  Russell  &  Co.  .  189  F.  R 255 

Wyckoff  v.  Wagner  Typewriter  Co .  .   88  F.  R 079 

Wyeth  v.  Stone 1  Story 120,  275,  423 

Wyman  v.  Donnelly 104  O.  G 171 


Yale  &  Greenleaf  Mfg.  Co.  v.  North.  .5  Blatch 788 

Yale  Lock  Co.  v.  Berkshire  Bank.  .  .    135  U.  S 107,  290,  292,  582 

Yale  Lock  Co.  v.  Greenleaf 117  U.  S 27 

Yale  Lock  Co.  v.  National  Bank 17  F.  R 49 

Yale  Lock  Co.  v.  Sargent 117  U.  S.  .234,  270,  272,  273,  425, 

434,  015,  022 

Yancey  v.  Enright 230  F.  R 435,  442,  402 

Yates  v.  Huson 8  App.  D.  C 171,  530,  578 

Yesbera  v.  Hardesty  Mfg.  Co 100  F.  R 808,  810,  844 

York  <fe  Cumberland  Railroad  Co.  v. 

Myers 18  Howard 007 

York  &  Maryland  Line  Railroad  Co. 

v.  Winans 17  Howard 213,  487,  500,  5J7 

Yost   Electric    Mfg.    Co.   v.    Perkins 

Electric  Mfg.  Co 179  F.  R 34 

Young  v.  Burley 200  F.  R 34 

Young  v.  Foerster 37  F.  R 302,  489 

Young  v.  Herman 232  F.  R 498,  499,  800 


TABLE    OF   CITED    CASES  clxxi\ 

Names  of  Cases.  Where  Reported.  Pages  in  tin*  book. 

Young  v.  Lippman 9  Blatch 7  Is 

Young  v.  Lippman 5  Fisher 77s 

Young  v.  Wolfe 120  F.  R 94  565 

Young   Reversible   Lock    Nut   Co.   v. 

Young  Lock  Nut  Co 72  F.  R 472 


Zane  v.  Peck 13  F.  R 615 

Zane  v.  Soffe 5  Bann.  &  Ard 592 

Zenith  Carburettor  Co.  v.  Stromberg 

Motor  Devices  Co 205  F.  R 643 

Zinn  v.  Weiss 7  F.  R 424 

Zinsser  v.  Krueger 45  F.  R 707 

Zinsser  v.  Krueger 48  F.  R 53 

Zittlosen  Mfg.  Co.  v.  Boss 219  F.  R 134,  454,  643 


TABLE  OF  CITED  STATUTES 


Names  of  Statutes. 

Patent  Act  of  1790 

Patent  Act  of  1793 

Patent  Act  of  1832;  July  3. 


Patent  Act  of  1832;  July  13 
Patent  Act  of  1836 


Patent  Act  of  1837 . 


Sections  of  Statutes.  Pages  in  this 

1 185, 

1 120, 

2 

3 281,  284, 

1.  .  / 

6 112,  143, 

7 112, 

13 281,  284, 

15 

18 312,  315,  317,  318, 

21 

5 

6 

7 263, 


Patent  Act  of  1839 

Patent  Act  of  1842 

Patent  Act  of  1848 

Patent  Act  of  1861 ;  March  2. 

Patent  Act  of  1870 


Patent  Act  of  1871;  March  3. . 


9 263, 

7 

3 

1 

11 

16 

25 

.       33 

41 

.46-52 

53 284,  297,  299, 

54 

60 

.       61 

63 315, 

.63-67 

66 

67 

71 

1 

clxxxi 


book. 

309 
310 
310 
299 
124 
146 
161 
299 
112 
320 
310 
282 
314 
285 
282 
285 
112 

18 
313 

18 
312 
203 
283 
161 
283 
301 
263 
263 
113 
317 
313 
318 
320 

17 
283 


clxxxii  TABLE    OF   CITED    STATUTES 


Names  of  Statutes. 

Sections  of  Btatutee. 
1 

Pages  in  this  book. 
.    144 

.. 

is:; 

129 

it 

is;   

ll'.» 

a 

490 

572 

" 

1911 

167 

4883 212,  520 

4884 201,  212,  520 

4885 146,  179,  209 

4880.  .68,  76,  91,  97,  113,  150,  209,  518, 

519 

4887 203 

4888  .129,  131,  132,  133,  214,  220,  250, 

537 

4889 129,  145 

4890 129,  147 

4891 129,  147 

4892 129,  141,  142 

4893 129,  1.50 

4894 179 

4895 130,  209,  211,  305 

489G 130,  143,  210,  211,  212,  352 

4897 121 

4898 326,  337,  585,  695 

4899 197 

4900 410,  584,  694 

4901 410,  414 

4902 175 

4903 151,  162 

4904 166,  399 

4908 167 

4909 152 

4910 152 

4911 154 

4912 155 

4913 155 

4914 156 

4915 156,  158,  399 

4916.  .281,  285,  297,  299,  300,  305,  308, 
528,  581,  691 

4917 265,  274,  276,  521,  601 

4918 174,  399,  402 

4919.  .479,  515,  569,  600,  628,  629,  637 

4920.  530,  531,  533,  534,  536,  578,  689 


TABLE    OF   CITED    STATUTES  clxXXUl 

Names  of  Statutes.  Sections  of  Statutes.  Pages  in  this  book. 

Revised  Statutes 4921 637,  7  13 

4922.  .265,  273,  521,  538,  580,  601,  738 

4923 69 

4924 316,  317 

4924-4928 :'-l  ' 

629 L56,    107,  466 

649 555,  597,  598 

699 r,,,~ 

700 598.  608 

...     701 738 

711    468 

['.'.'..'.['. 716 746 

720 746 

721 415,  550,  600,  701 

723 777 

u             760 46, 

764 467 

823 602 

824 603,  604 

848 6°4 

863       591,831 

864 591,831 

;;;; ses 591,  ssi 

866 648 

892 148,  557,  572,  582 

"'.' 893 572 

899 583 

900 583 

...     905 r)83 

914  ...415,  516,  556,  600 

;;;;;;;::;::::  917 747 

945 648 

....  973 G°i 

983 ,i0- 


733 

" ' 7;;:; 

467 

318 

4928 314,  320 

4929 17,  18,  97 


1007. 
1012. 
1910. 

4927 . 


202 
4933 


4931 

129 


4934. 


144 


clxXXiv  TABLE    OF   CITED   STATUTES 

Names  of  Statutes.  Sections  of  Statutes.  Pages  in  this  book. 

Revised  Statutes 5053 350 

5596 746 

Patent  Act  of  1875 1 401,  472 

2 679,  704,  715 

Patent  Act  of  1887 1 632,  X20 

Patent  Act  of  1888 1 520 

Sherman  Anti-trust  Act  of  1890         1 382 

2 383 

Judiciary  Act  of  1891 6 607,  733 

"  ■        "        11 728,  733 

Judiciary  Act  of  1893 7 176,  608,  735 

8 732 

9 154,  172 

Jurisdiction  Act  of  1897 1 473 

Patent  Act  of  1897 1 518,  519 

"        1,3,8 122 

2 530,531,536,578 

3,8 122,  203 

4 179 

5 329,559,585 

6 523,  550 

Bankruptcy  Act  of  1898.  ..'...       70 350 

2 351 

5 351 

Patent  Act  of  1899 130,  210 

Patent  Act  of  April,  1902 212,  520 

Patent  Act  of  May,  1902 17,  18,  97 

Patent  Act  of  1903 1 123,  170,  204 

2 141,  142 

4 175 

Patent  Act  of  May  23,  1908 ..  .  1....130,    143,    145,    179,   209,   211, 

212,  352 

Court  of  Claims  Act  of  1910 ...         1 195,  478 

Patent  Act  of  1910 1 174 

Bankruptcy  Act  of  1910 8,  12 350 

Judicial  Code  of  1911 1 517 

24 636 

48 472 

128 176,  416,  719,  733,  739 

129 719,  783 

238 416,  731 

239 740 

240 416,  608,  740 


TABLE    OF   CITED    STATUTES  clxXXV 

Names  of  Statutes.  Sections  of  Statutes.  Pages  in  this  book. 

Judicial  Code  of  1911 250 608,  739 

251 608 

267 777 

Federal  Anti-Trust  Act  of  1914        3 :W5 

17 746 

18 700,  771 

"               19 744,  782 

Patent  Act  of  July  16,  1914 ...          1 152 

Patent  Act  of  Mar.  3,  1915 1 130.  1  ID 


THE    LAW    OF    PATENTS 
FOR  INVENTIONS 


CHAPTER  I 


THE    SUBJECT-MATTER    OF    PATENTS 


1.  Constitutional  and  statutory 

foundation   of   the    patent 
laws. 

2.  Patent  law  meaning  of  the 

word  "discovery." 

3.  Patent  law  meaning  of  the 

word  "art." 

7.  Difference  between  a  "proc- 

ess" and  a  "principle"  in- 
quired into. 

8.  Illustrated  by  the  case  of  Mc- 

Clurg  v.  Kingsland. 

9.  Illustrated    by    the    case    of 

O'Reilly  v.  Morse. 

10.  Illustrated    by    the    case    of 

Mowry  v.  Whitney. 

11.  Illustrated    by    the    case    of 

Tilghman  v.  Proctor. 
11a.  Illustrated  by  the  Telephone 
Cases. 


12.  Illustrated  by  the  five  cases 
when  compared. 

Illustrated  by  the  five  cases 
when  contrasted. 

Deduced  from  the  five  cases 
as     compared     and    con- 

.    trasted. 

Illustrated  by  the  eighth 
claim  of  Morse. 

Machines,  and  improvements 
of  machines. 

Manufactures. 

Compositions  of  matter. 

Distinction  between  ma- 
chines, manufactures,  and 
compositions  of  matter. 

20.  Designs. 

21.  Design  patents,   under  stat- 

utes earlier  than  1873. 

22.  Ornament  and  utilitv. 


13. 


14. 


15. 

16. 

17. 
18. 
19. 


§  1.  Congress  has  power  to  promote  the  progress  of 
science  and  useful  arts,  by  securing  for  limited  times  to 
inventors  the  exclusive  right  to  their  respective  discov- 
eries.1 This  constitutional  law  is  the  foundation  of  all 
the  patent  laws  of  the  United  States.    In  accordance  with 

1  Constitution  of  the  United  States  of  America,  Article  I,  Section  8. 

1 


2  THE    SUBJECT-MATTER   OF   PATENTS      [('HAP.    I. 

the  power  it  confers,  and  in  pursuance  of  the  object  it 
mentions,  Congress  has,  from  time  to  time,  enacted  cer- 
tain statutes.  The  principal  enactment,  in  force  at  this 
writing,  is  Section  4886  of  the  Revised  Statutes  of  the 
United  States,  as  amended  March  3,  1897.  Subject  to 
certain  conditions  and  limitations,  hereafter  to  be  ex- 
plained in  this  book,  that  section  provides  that  any  person 
who  has  invented  or  discovered  any  new  and  useful  art, 
machine,  manufacture,  or  composition  of  matter,  or  any 
new  and  useful  improvement  thereof,  may  obtain  a  patent 
therefor.  Statute  law,  identical  with  this,  has  been  in 
force  in  the  United  States  ever  since  April  10,  1790;  ex- 
cept that  the  conditions  and  limitations  attending  it  have 
varied  somewhat  from  time  to  time;  and  except  that 
compositions  of  matter  were  not  mentioned  in  the  statute 
prior  to  that  of  February  21,  1793,  though  they  were 
doubtless  covered  by  the  word  " manufacture,"  which 
the  earlier  statute  contained. 

§  2.  The  word  "discovery"  does  not  have,  either  in 
the  Constitution  or  the  statute,  its  broadest  signification. 
It  means  invention  in  those  documents,  and  in  them  it 
means  nothing  else.2  The  " discoveries "  of  inventors  are 
inventions.  The  same  man  may  invent  a  machine  and 
may  discover  an  island  or  a  law  of  nature.  For  doing  the 
first  of  these  things  the  patent  laws  may  reward  him, 
because  he  is  an  inventor  in  doing  it;  but  those  laws  can- 
not reward  him  for  doing  either  of  the  others,  because  he 
is  not  an  inventor  in  doing  either.3  The  statute  provides 
that  patents  may  be  granted  for  four  classes  of  things. 
These  are  arts,  machines,  manufactures,  and  composi- 

2  In  re  Kemper,  1  McArthur's  1895;  Thomson-Houston  Electric 
Patent  Cases,  4,  1841;  Haffcke  v.  Co.  v.  Nassau  Electric  R.  Co.,  107 
Clark,  46  F.  R.  772,  1891.  F.  R.  280,  1901. 

3  WaU  v.  Leek,  66  F.  R.  557,  See  Chapter  II. 


CHAP.    I.J      THE    SUBJECT-MATTER   OF   PATENTS  3 

tions  of  matter.  None  of  these  things  can  be  originally 
made  known  by  discovery,  as  our  continent  was.  They 
are  not  found,  but  created.  They  are  results  of  original 
thought.  They  are  inventions.  Laws  of  nature,  on  the 
other  hand,  can  never  be  invented  by  man,  though  they 
may  be  discovered  by  him.  They  exist  as  facts  at  all 
times  whether  known  or  unknown  to  human  knowledge. 
When  discovered,  they  may  be  utilized  by  means  of  an 
art,  a  machine,  a  manufacture,  or  a  composition  of  matter. 
It  is  the  invention  of  one  or  more  of  these,  for  the  purpose 
of  utilizing  a  law  of  nature,  and  not  the  discovery  of  that 
law,  that  may  be  rewarded  with  a  patent.4 

§  3.  The  word  "art"  also  has  a  narrower  meaning  in 
the  patent  laws  than  it  has  in  the  dictionaries.  In  the  dic- 
tionaries its  significance  is  "the  use  of  means  to  produce 
a  result."  In  the  patent  laws  it  covers  only  a  limited 
meaning  of  the  word  process.  The  generic  definition  of 
process  is  "an  operation  performed  by  rule  to  produce  a 
result."  Operations  performed  by  rule  may  be  classified 
as:  1,  operations  which  consist  partly  or  wholly  in  the 
employment  of  heat,  light,  electricity,  magnetism,  chem- 
ical action,  pneumatics,  hydraulics,  or  some  other  force 
producing  chemical  change;  2,  operations  which  consist 
entirely  of  mechanical  transactions,  and  which  are  only 
the  peculiar  functions  of  the  respective  machines  which 
are  constructed  to  perform  them;  3,  operations  which 
consist  entirely  of  mechanical  transactions,  but  which 
may  be  performed  by  hand  or  by  any  of  several  different 
mechanisms  or  machines.  It  is  settled  that  all  processes 
which  belong  to  the  first  class  are  subjects  of  patents;"' 

4  O'Reilly  v.  Morse,  15  Howard,  780,  1876;  Tilghman  v.  Proctor, 
112,  1853;  Morton  v.  Infirmary,  5  102  U.  S.  728,  1880;  Eames  v.  An- 
Blatch.  116,  1862.  drews,  122  U.  S.  40,  1887;  Fer- 

5  Cochrane  v.  Deener,  94  U.  S.  mentation  Co.  v.  Maus,  122  U.  S. 


THE   SUBJECT-MATTER   OF    PATENTS      [CHAP.    f. 


and  that  all  processes  which  belong  to  the  second  class  are 
unpatentable  in  the  United  States.'1  It  was  formerly 
debatable  whether  processes  which  belong  to  the  third 
class  are  subjects  of  patents  or  not,  but  the  question 
has  finally  been  definitely  settled  in  the  affirmative.7  Not 
only  need  the  process  not  involve  any  chemical  change 
or  change  of  substance,  but  it  is  enough,  it  is  said,  if  a 
new  thing  is  created  merely  by  mechanical  readjustments 
or  new  juxtaposition  of  parts.7" 

It  has  been  held,  whenever  the  question  has  come  be- 
fore the  courts,  and  may  now  be  considered  settled  law 
that  a  "system"  or  method  of  transacting  business  is 
neither  an  "art"  nor  does  it  come  within  any  other  desig- 
nation of  patentable  subject-matter; 8  e.  g.,  a  system  of 


427,  1887;  Telephone  Cases,  126 
U.  S.  533,  1888;  Westinghouse 
Electric  &  Mfg.  Co.  v.  Catskill 
Co.,  94  F.  R.  868,  1899;  Kirch- 
berger  v.  Am.  Acetylene  Co., 
124  F.  R.  764,  1903. 

6  Corning  v.  Burden,  15  How- 
ard, 267, 1853;  Busch  v.  Jones,  184 
U.  S.  607, 1902;  Carnegie  Steel  Co. 
v.  Cambria  Iron  Works,  185  U.  S. 
425,  1902;  MacKay  v.  Jackman, 
12  F.  R.  615,  1882;  New  v.  War- 
ren, 22  O.  G.  587,  1882;  Brainard 
v.  Cramme,  12  F.  R.  621,  1882; 
Goss  v.  Cameron,  14  F.  R.  576, 
1882;  Hatch  v.  Moffitt,  15  F.  R, 
253,  1883;  Reay  v.  Raynor,  19 
F.  R.  310,  1884;  Moulton  v.  Com- 
missioner of  Patents,  61  O.  G. 
1480,  1892;  Bonsack  Machine 
Co.  v.  Elliot,  63  F.  R.  837,  1894; 
Gindorff  v.  Deering,  81  F.  R.  952, 
1897;  Conroy  v.  Penn  Electrical 


&  Mfg.  Co.,  155  F.  R.  421,  1907; 
American  Lava  Co.  v.  Steward, 
155  F.  R.  731,  1907;  Denning 
Wire  &  Fence  Co.  v.  Am.  Steel  & 
Wire  Co.,  169  F.  R.  793,  1909; 
U.  S.  Consolidated  Seeded  Raisin 
Co.  v.  Selma  Fruit  Co.,  195  F.  R. 
264,  1912;  Ball  v.  Coker,  210 
F.  R.,  278,  1913. 

'Kahn  v.  Starrels,  135  F.  R. 
532,  1905;  General  Subconstruc- 
tibn  Co.  v.  Netcher,  174  F.  R. 
236,  1909;  Expanded  Metal  Co. 
v.  Bradford,  214  U.  S.  366,  1909. 

~'a  David  E.  Kennedy,  Inc.,  v. 
Beaver  Tile  &  Specialty  Co.,  232 
F.  R.  477,  1916. 

8  United  States  Credit  System 
Co.  v.  American  Indemnity  Co., 
51  F.  R.  721;  United  States 
Credit  System  Co.  v.  American 
Credit  Indemnity  Co.,  53  F.  R. 
818;  Hocke  v.  X.  Y.  Central  & 


CHAP.    I.]      THE    SUBJECT-MATTER   OF    PATENTS  5 

cash  registering  and  checking  for  hotels  apart  from  the 
physical  means  of  conducting  the  system  is  not  the  subject 
of  a  patent.  As  to  whether  or  not  the  means  of  carrying 
out  the  system  are  patentable,  there  seems  to  be  no  ob- 
jection in  principle  or  authority.9  It  may  be  remarked, 
however,  that  as  a  rule  such  patents  have  not  met  with 
notable  success  in  the  courts.10 

§  7.  It  was  shown  in  Section  2  that  the  discovery  of  a 
law  of  nature  is  not  patentable.  That  which  was  so  de- 
nominated in  that  section  is  often  spoken  of  as  a  "princi- 
ple," and  at  other  times  as  a  "scientific  principle,"  and 
again  as  a  "scientific  fact,"  and  still  again  as  a  "law  of 
nature."  By  whatever  name  it  is  called  it  is  certain  that 
the  thing  referred  to  is  not  a  material  substance.  It  is 
not  to  be  apprehended  by  the  sense  of  touch,  but  when 
discovered  finds  a  lodgment  in  the  mind  as  a  mental  con- 
ception only.  So  also,  a  process  is  not  a  substance  which 
can  be  handled.  It  is  seen  only  by  noting  its  constituent 
acts  as  they  are  being  performed.  Principles  and  proc- 
esses are  therefore  alike  in  that  they  are  intangible,  and 
being  so,  they  have  sometimes  been  mistaken  for  each 
other. 

Whether  a  given  patent  is  one  for  a  process  or  one  for  a 

H.  R.  R.  Co.,  122  F.  R.  467;  v.  Lorraine  Co.,  160  F.  R.  467, 
Hotel  Security  Checking  Co.  v.  1908,  and  cases  cited;  Time 
Lorraine  Co.,  160  F.  R.  467,  Saver  Co.  v.  Stamford  Trust  Co., 
1908,  and  cases  cited  therein;  176  F.  R.  358,  1910;  Exchange 
Berardini  v.  Tocci,  190  F.  R.  329,  Scrip-Book  Co.  v.  Rand.  McNally 
1911.  &  Co.,  194  F.  R.  444,  1912;  Ex- 
pand, McNally  &  Co.  v.  change  Scrip-Book  Co.  v.  Rand, 
Exchange  Scrip-Book  Co.,  187  McNally  &  Co.,  203  F.  R.  278, 
F.  R.  984,  1911;  Cincinnati  Trac-  1913. 

tion  Co.  v.  Pope,  210  F.  R.  443,  See   Mitchell   v.  International 

1913.  Tailoring  Co.,  170  F.  R.  91,  1909, 

10  Hotel  Security  Checking  Co.  and  Section  17,  post. 


6  THE   SUBJECT-MATTER   OF    PATENTS       [CHAP.    I. 

principle,  is  a  question  upon  which  its  validity  may  wholly 
depend.  It  is  therefore  important  to  ascertain  what  rule 
governs  the  decisions  of  such  questions;  to  ascertain  pre- 
cisely wherein  consists  the  difference  between  a  principle 
and  a  process.  Any  search  for  that  distinction  made  dur- 
ing the  first  half  of  the  nineteenth  century  was  necessaril}'' 
a  speculative  one,  for  lack  of  authoritative  adjudged  cases 
from  which  to  reason.  Now,  however,  when  engaged  in 
an  investigation  of  the  point,  we  have  recourse  to  five 
very  instructive  Supreme  Court  decisions.  The  proper 
method  of  conducting  the  inquiry  seems  to  be,  to  first  set 
down  the  important  relevant  points  of  each  of  those  cases, 
and  then  to  ascertain  what  doctrine  is  consistent  with 
them  all.  Such  hypothetical  rules  as  are  found  to  be 
inconsistent  with  either  of  the  cases  may  safely  be  rejected 
as  not  true  rules;  but  if  some  one  proposition  is  found  to 
logically  underlie  all  five  decisions,  it  is  safe  to  believe 
that  the  Supreme  Court  will  never  depart  from  it. 

§  8.  In  McClurg  v.  Kingsland  n  it  appears  that  some 
method  was  long  sought,  by  means  of  which  rollers  or 
cylinders  could  be  so  cast  that  the  metal,  when  introduced 
into  the  moulds,  would  be  given  a  rotary  motion,  to  the 
end  of  throwing  the  flog  or  dross  into  the  centre  instead  of 
the  circumference  of  the  casting.  The  fact  that  rotary 
motion  would  so  result  was  an  understood  law  of  nature, 
an  understood  operation  of  centrifugal  force.  The  prob- 
lem was  to  produce  such  a  motion  more  conveniently 
and  more  uniformly  than  by  stirring  the  liquid  metal  with 
a  circular  movement  of  an  implement  inserted  therein. 
That  problem  was  solved  in  1834  by  James  Harley,  a 
workman  in  a  foundry  in  Pittsburg,  Pennsylvania.  He 
discovered  that  the  rotary  motion  desired,  could  be  im- 
parted to  melted  metal  by  injecting  that  metal  into  a 
11  McClurg  v.  Kingsland,  1  Howard,  202,  1843. 


CHAP.    I.]        THE    SUBJECT-MATTER    OF    PATENTS  7 

mould  tangentially.  A  patent  was  granted  to  him  in  1835, 
for  "an  improvement  in  the  mode  of  casting  chilled  rollers 
and  other  metallic  cylinders  and  cones."  Litigation  arose 
on  the  patent,  and  coming  before  the  Supreme  Court 
it  was  held  to  be  a  patent  for  a  process. 

§  9.  In  O'Reilly  v.  Morse12  it  appears  that  Samuel  F.  B. 
Morse  was  not  the  discoverer  of  either  of  the  laws  of  nature 
which  he  utilized  in  his  telegraph.  He  did,  however,  in- 
vent a  machine  by  means  of  which  those  laws  could  be 
made  to  carry  information  to  a  distant  place.  That 
machine  was  dependent  for  success  on  several  laws  of 
nature,  and  lacking  any  one  of  them  it  would  have  failed 
of  its  result.  The  chief  of  these  was  the  electric  current 
discovered  by  Gray.  The  one  next  in  importance  was  that 
discovered  by  (Ersted  and  Arago,  and  known  as  electro- 
magnetism.  The  eighth  claim  of  Morse's  patent  was 
construed,  by  the  Supreme  Court,  to  be  a  claim  for  the 
use  of  an  electric  current,  for  marking  intelligible  signs 
at  any  distance.  The  Supreme  Court  held  that  claim  to 
be  void. 

§  10.  In  Mowry  v.  Whitney,13  the  following  matters  are 
set  forth.  It  had  long  been  known  that  sudden  cooling  of 
very  hot  cast-iron  makes  it  hard,  but  brittle.  On  the 
other  hand,  the  slow  cooling  of  very  hot  cast-iron  was 
known  to  make  it  soft,  but  tough.  This  is  annealing. 
Cast-iron  car-wheels  require  hardened  peripheries  and 
annealed  hubs  and  plates,  because  the  first  have  to  endure 
friction  and  the  last  two  have  to  endure  strain.  The  early 
attempts  to  subject  car- wheels  to  both  hardening  and 
annealing  produced  a  weak  and  worthless  article,  result- 
ing from  the  law  of  the  expansion  and  contraction  of 
metals.    The  peripheries  of  the  wheels  were  hardened  by 

12  O'Reilly  v.  Morse,  15  How-  13  Mowry  v.  Whitney,  14  Wal- 

ard,  112,  1853.  lace,  620,  1871. 


S  THE   SUBJECT-MATTER   OF   PATENTS        [CHAP.    T. 

chilling  them,  this  chilling  consisting  in  surrounding  the 

moulds  in  which  the  wheels  were  cast  with  a  circle  of  iron, 
and  with  only  a  thin  film  of  sand  between  it  and  the  pe- 
ripheries of  the  wheels.  This  iron  band,  being  a  rapid 
conductor  of  heat,  caused  the  peripheries  of  the  wheels 
to  suddenly  cool,  and  thus  be  hardened,  while  the  plates 
and  hubs,  being  enclosed  in  a  thick  mass  of  sand,  cooled 
very  slowly,  and  were  thus  annealed.  The  sudden  cooling 
of  the  rims  of  the  wheels,  however,  materially  contracted 
then  circumference,  and  that  contraction  forced  the  still 
hot  plates  to  contract  their  diameter.  Afterward,  when  the 
plates  came  to  cool  down,  they  themselves  contracted  still 
more,  and  thus  tended  to  break  away  from  the  rims,  which, 
having  entirely  cooled  some  time  before,  had  no  more 
contracting  to  do.  Wheels  so  made  were  therefore  weak. 
In  this  condition  of  affairs,  Asa  Whitney,  of  Philadel- 
phia, discovered  in  1848,  that  hardness  once  given  to  iron 
will  not  be  destroyed  or  seriously  impaired  by  the  immedi- 
ate reheating  of  the  iron,  and  its  subsequent  very  slow 
cooling;  and  he  also  conceived  a  process  by  means  of 
which  that  law  of  nature  could  be  utilized  to  obviate  the 
evil  explained  in  the  last  paragraph.  That  process  con- 
sisted in  taking  the  wheels  from  the  moulds,  very  soon 
after  their  rims  were  chilled,  and  in  putting  them  im- 
mediately into  a  chamber  or  furnace  which  had  previously 
been  heated  about  as  hot  as  the  then  heat  of  the  wheels, 
and  in  thereupon  gradually  raising  the  temperature  of 
all  parts  of  the  interior  of  the  chamber  or  furnace  and  its 
contents,  to  an  equally  high  point,  and  finally  in  causing 
all  parts  of  the  wheels  to  cool  with  equal  slowness.  In 
accordance  with  the  law  of  nature  discovered  by  Whitney, 
it  turned  out  that  the  third  stage  of  this  process  did  not 
destroy  or  seriously  impair  the  hardness  of  the  peripheries 
of  the  wheels  which  were  subjected  to  it.    It  did,  however, 


CHAP.    I.]        THE   SUBJECT-MATTER   OF   PATENTS  9 

cause  the  peripheries  of  the  wheels  to  re-expand  in  cir- 
cumference, and  in  so  doing  to  stretch  the  still  hot  and 
ductile  plates  back  to  nearly  the  same  diameter  as  that 
they  had  before  the  rims  were  contracted  by  the  chill. 
The  fourth  stage  of  the  process  then  served  to  contract 
all  parts  of  the  wheels  harmoniously,  and  the  result  of  the 
whole  process  was  to  remedy  the  evil  at  which  it  was 
aimed.  Mr.  Whitney  obtained  a  patent  for  his  invention, 
and  the  Supreme  Court  held  it  to  be  a  patent  for  a  process, 
and  held  it  to  be  valid. 

§11.  The  case  of  Tilghman  v.  Proctor14  discloses  the 
following  facts:  The  celebrated  French  chemist,  Chevreul, 
discovered  in  1813  that  fat  is  a  regular  chemical  compound, 
consisting  of  glycerine  and  three  kinds  of  fat  acids.  He 
also  discovered  that  fat  can  be  separated  into  those,  its 
constituent  elements,  by  causing  them  to  severally  unite 
with  an  atomic  equivalent  of  water.  In  1853  Richard  A. 
Tilghman,  a  Philadelphia  chemist,  discovered  that  those 
elements  of  fat  can  be  caused  so  to  unite  with  an  atomic 
equivalent  of  water,  by  mixing  the  fat  with  water,  and  by 
thereupon  subjecting  the  mixture  to  a  high  degree  of 
heat,  and  to  such  a  degree  of  pressure  as  will  prevent  the 
conversion  of  the  water  into  steam.  In  1854  Mr.  Tilghman 
obtained  a  patent,  in  the  specification  of  which  he  an- 
nounced his  discovery,  and  described  a  suitable  apparatus 
in  which  to  utilize  that  discovery  in  connection  with  the 
discoveries  of  Chevreul,  and  claimed  "the  manufacturing 
of  fat  acids  and  glycerine  from  fatty  bodies  by  the  action 
of  water  at  a  high  temperature  and  pressure."  The 
Supreme  Court  held  that  patent  to  be  a  patent  for  a 
process  and  to  be  valid. 

§  11a.  The  Telephone  Cases15  set  forth  the  following 

14  Tilghman     v.    Proctor,     102  15  Telephone  Cases,  126  U.  S. 

U.  S.  707,  1880.  531,  1888. 


10  Till!    SIBJECT-MATTEH    OF    PATENTS         [CHAP.    I. 

fundamental  facts.  It  lias  been  known  for  centuries, 
that  articulate  sounds  can  be  reproduced  at  a  distance 
from  the  place  where  they  arc  originally  uttered,  by  means 
of  two  thin  diaphragms,  made  of  metal  or  membrane, 
and  attached  at  their  centres  to  the  respective  ends  of  a 
tightly  drawn  cord  or  wire;  and  that  when  a  person  speaks 
near  and  toward  one  of  those  diaphragms,  the  sound 
vibrations  which  are  produced  by  his  voice  cause  that 
diaphragm  to  vibrate  correspondingly;  and  that  those 
corresponding  vibrations  are  transmitted  along  the  cord 
or  wire  to  the  other  diaphragm,  and  cause  it  also  to  vi- 
brate correspondingly;  and  that  the  second  diaphragm 
thus  vibrating,  causes  corresponding  vibrations  in  the  air 
adjacent  thereto;  and  that  when  those  vibrations  strike 
upon  the  drum  of  the  ear  of  a  listener,  they  cause  him  to 
hear  what  was  spoken  toward  the  first  diaphragm.  In- 
struments like  this  are  called  string  telephones,  and  they 
utilize  that  law  of  nature  which  causes  such  diaphragms 
as  those  employed  therein,  to  copy  and  to  transmit  the 
vibrations  of  air  which  occur  adjacent  thereto.  It  has 
been  known  ever  since  1831,  when  it  was  discovered  by 
Faraday,  that  when  an  armature  is  moved  in  front  of  an 
electro-magnet,  which  is  being  magnetized  by  an  electric 
current  passing  through  its  coil,  the  motion  modifies 
the  current,  and  that  those  modifications  correspond  to 
the  movements  of  the  armature  in  duration,  in  direction, 
and  in  strength.  And  it  has  long  been  known  that  the 
electric  current  thus  modified,  will  cause  correspondingly 
modified  movements  in  the  armature  of  another  electro- 
magnet, through  the  coil  of  which  the  electric  current 
thus  modified  is  also  passing.  At  this  stage  of  knowledge 
of  the  relevant  laws  of  nature,  Alexander  Graham  Bell  in- 
vented his  telephone.  That  invention  consisted  in  mount- 
ing two  such  diaphragms  as  those  of  the  string  telephone, 


CHAP.    I.]        THE    SUBJECT-MATTER   OF   PATENTS  11 

upon  two  armatures  arranged,  combined  and  movable  as 
above  described,  and  thus  enabling  one  of  those  armatures 
to  transmit,  and  the  other  one  to  receive,  such  minute 
and  exceedingly  variant  vibrations  as  those  caused  in  the 
air  by  the  human  voice;  and  it  also  consisted  in  the  proc- 
ess of  transmitting  sounds,  by  causing  electrical  undula- 
tions, similar  in  fonn  to  the  vibrations  of  the  air  caused  by 
the  sounds,  to  occur  upon  the  conducting  wire.  Mr. 
Bell  obtained  a  patent  for  that  invention  in  1876,  and  the 
Supreme  Court  held  it  to  be  a  patent  for  a  process,  as  well 
as  for  an  apparatus,  and  held  the  process  claim  to  be  valid. 

§  12.  The  last  five  sections  present  five  cases,  covering 
five  subject-matters  of  claim,  four  of  which  the  Supreme 
Court  held  to  be  patentable  processes,  and  one  of  which 
that  tribunal  held  to  be  an  unpatentable  principle,  or  law 
of  nature.  To  learn  the  controlling  distinction  between 
a  claim  for  a  process  and  a  claim  for  a  principle,  it  is 
therefore  sufficient  to  ascertain  precisely  wherein  consists 
the  controlling  difference  between  the  eighth  claim  of 
Morse,  on  the  one  hand,  and  the  claims  of  Harley, 
Whitney,  Tilghman,  and  Bell  on  the  other. 

That  difference  does  not  consist  in  the  fact  that  Harley, 
Whitney,  Tilghman,  and  Bell  each  discovered  one  of  the 
laws  of  nature  which  he  utilized,  while  the  laws  which 
Morse  utilized  were  discovered  by  others;  because  the 
Supreme  Court  did  not  rest  its  decision  in  the  Morse  case 
on  the  ground  that  he  was  not  the  discoverer  of  the  electric 
current,  but  on  the  ground  that,  being  a  power  in  nature, 
it  was  not  patentable  to  any  person.  Neither  does  that 
difference  consist  in  anything  outside  of  the  use  of  laws  of 
nature,  because  all  five  claims  extended  to  accomplishing 
results  by  means  of  such  law  or  laws,  regardless  of  the 
particular  apparatus  used  in  the  respective  processes. 
The  fact  that  tangential  injection  of  melted  metal  into  a 


12  THE    SUBJECT-MATTER  OF    PATENTS        [CHAP.   I. 

cylindrical  mould  will  give  that  metal  a  rotary  motion; 
the  fact  that  moderate  reheating  of  a  car  wheel  will  not 
destroy  its  chill;  the  fact  that  very  hot  water  will  separate 
the  elements  of  fat ;  the  fact  that  mechanical  motion  may 
cause  electrical  undulations — every  one  of  these  is  just 
as  truly  a  law  of  nature,  just  as  truly  a  " principle,"  as  is 
the  fact  of  the  electric  current.  Nor  was  the  apparatus 
described  by  Harley,  Whitney,  Tilghman,  and  Bell,  re- 
spectively, for  the  purpose  of  utilizing  the  first  four  of 
these  laws,  respectively,  claimed  as  their  sole  respective 
inventions,  any  more  than  the  particular  telegraph  de- 
scribed by  Morse  was  made  essential  to  his  eighth  claim. 

§  13.  There  is  apparently  but  one  radical  distinction  be- 
tween the  claims  of  the  four  patents  of  Harley,  Whitney, 
Tilghman,  and  Bell,  on  the  one  hand,  and  the  eighth 
claim  of  Morse  on  the  other.  That  distinction  is  as  fol- 
lows: Harley,  Whitney,  Tilghman,  and  Bell  each  produced 
a  process  which  utilized  several  laws  of  nature,  and  each 
of  them  claimed  the  entire  process  he  produced,  including 
the  use  of  all  those  laws,  in  the  order  and  method  de- 
scribed. Morse  also  made  an  invention  which  utilized 
several  laws  of  nature,  but  instead  of  claiming  his  combined 
and  methodical  use  of  all  those  laws,  his  eighth  claim  was 
construed  as  confined  to  one  of  them  alone.  This  differ- 
ence, taken  in  connection  with  the  fact  that  the  Supreme 
Court  sustained  the  patents  of  Harley,  Whitney,  Tilgh- 
man, and  Bell,  and  overthrew  the  eighth  claim  of  Morse, 
and  taken  in  connection  with  the  fact  that  no  other  rel- 
evant and  important  difference  can  be  detected,  points 
to  the  soundness  of  the  doctrine  stated  in  the  next  section, 
and  illustrated  in  the  section  following  that. 

§  14.  A  patent  for  a  process  is  a  patent  for  the  described 
combined  use  of  all  the  laws  of  nature  utilized  by  that  proc- 
ess.    A  patent  for  a  principle  is  a  patent  for  one  only  of 


CHAP.    I.]        THE    SUBJECT-MATTER   OF   PATENTS  13 

the  laws  of  nature  used  in  a  process.  If  a  patent  for  a 
principle  were  granted  and  sustained,  it  would  be  much 
broader  than  a  patent  for  a  process,  because  it  would  cover 
all  processes  which  aim  at  the  same  result,  and  which  use 
the  particular  law  of  nature  covered  by  the  patent  for  a 
principle,  no  matter  in  what  combination  with  other  laws. 
A  patent  for  a  process,  on  the  other  hand,  covers  only  its 
own  method  of  using  all  of  the  laws  of  nature  which  it 
utilizes.  To  grant  and  sustain  a  patent  for  a  principle, 
would  induce  an  inventor  to  guess  which  of  the  laws  of 
nature  used  in  his  process,  will  always  be  found  indispen- 
sable, and  guessing  rightly,  would  enable  him,  by  claiming 
that  particular  law,  to  suppress  all  subsequent  processes 
using  it,  and  thus  to  suppress  all  subsequent  invention 
in  the  same  field,  until  such  time  as  his  patent  might  ex- 
pire. A  patent  for  a  process,  on  the  contrary,  leaves  the 
field  open  to  ingenious  men  to  invent  and  to  use  other 
processes  using  part  of  the  laws  used  by  the  patented 
process,  or  using  all  of  them  in  other  combinations  and 
methods.16 

§  15.  An  illustration  of  the  doctrines  of  the  last  section 
exists  in  the  matter  of  the  eighth  claim  of  Morse,  when 
considered  in  connection  with  other  telegraphs  than  his. 
The  subject  of  that  claim  was  construed  to  be  the  use  of 
electric  current  for  marking  signs  at  any  distance.  Elec- 
tric current  is  one  fact,  and  electro-magnetism  is  another. 
The  first  was  discovered  by  Gray,  in  1729,  but  the  exist- 
ence of  the  latter  was  not  known  until  ninety  years  later. 
Morse  used  both  in  his  telegraph,  but  his  eighth  claim  was 
construed  to  cover  the  use  of  electric  current  with  or  with- 

16  Westinghouse      Electric      &  phone  Mfg.  Co.,  109  F.  R.  996, 

Mfg.  Co.  v.  Beacon  Lamp  Co.,  95  1901 ;  Manhattan  General  Const. 

F.  R.  464,   1899;  American  Bell  Co.  v.  Helios-Upton  Co.,  135  F.  R. 

Telephone  Co.  v.  National  Tele-  785,  1905. 


14  THE   SUBJECT-MATTER  OF   PATENTS       [CHAP.    I. 

out  the  other.    But  without  electro-magnetism  Morse's 

telegraph  would  not  work.  After  Morse  came  Bain,  who 
invented  a  telegraph  which  used  electric  current,  but 
did  not  use  electro-magnetism.  Its  recording  apparatus 
operated  electro-chemically,  and  not  electro-magnetically 
like  that  of  Morse.  Bain's  telegraph  could  work  with  a 
much  feebler  current  than  could  that  of  Morse,  and  there- 
fore the  relay  batteries  of  the  latter  were  not  needed  by 
Bain.  The  two  telegraphs  had  nothing  in  common  ex- 
cept that  both  used  electric  current.  If  the  eighth  claim 
of  Morse  had  been  sustained  as  construed,  it  would  have 
covered  Bain's  and  every  other  electric  telegraph,  capable 
of  marking  signs  at  a  distance.  On  the  other  hand,  had 
that  claim  been  so  drawn  as  to  cover  the  combined  use  of 
all  the  laws  of  nature  utilized  by  the  telegraph  of  Morse, 
when  used  as  he  used  them,  then  it  would  have  been  a 
claim  for  a  process,  and  not  being  obnoxious  to  either  of 
the  weighty  objections  which  are  set  forth  in  the  opinion 
of  the  Supreme  Court,  it  would  doubtless  have  been 
sustained  by  that  tribunal.  In  that  case,  however,  it 
would  not  have  been  infringed  by  the  telegraph  of  Bain, 
nor  by  any  other  which,  like  his,  dispensed  with  one  or  more 
of  the  laws  of  nature  necessary  to  the  process  of  Morse. 

§  16.  Machines,  and  improvements  of  machines  con- 
stitute the  subjects  of  a  majority  of  the  American  patents 
heretofore  granted.  A  machine  is  a  combination  of  hete- 
rogeneous mechanical  parts,  adapted  to  receive  energy, 
and  to  apply  it  to  the  production  of  some  energetic  result 
or  results.  All  the  parts  of  a  machine  may  be  old,  while 
the  machine  as  a  whole,  and  also  the  sub-combinations 
which  are  contained  therein,  are  proper  subjects  of  pat- 
ents.17 An  improvement  of  a  machine  may  consist  of  an 
addition  thereto,  or  in  a  subtraction  therefrom,  or  in  sub- 
"  Cantrell  v.  Wallick,  117  U.  S.  694,  1886. 


CHAP.    I.J        THE    SUBJECT-MATTER   OF   PATENTS  1 .") 

stituting  for  one  or  more  of  its  parts  something  different, 
or  in  so  rearranging  its  parts  as  to  make  it  work  better  than 
before.  Whether  or  not  a  given  improvement  is  a  patent- 
able one  will  always  depend  upon  several  considerations. 
In  order  to  be  so  it  must,  first  of  all,  be  an  invented  im- 
provement,18 as  distinguished  from  one  otherwise  pro- 
duced. This  point  of  law  is  explained  at  large  in  the  next 
chapter.  So  also  it  is  explained  in  the  chapter  on  infringe- 
ment, what  improvements  can  be  used,  and  what  improve- 
ments cannot  be  used,  without  infringing  the  patents  for 
the  machines  improved  upon,  if  the  latter  are  patented. 
It  is  enough  to  say  in  this  chapter,  that  patents  are  not 
void  merely  because  they  cover  processes  or  things  which 
include  old  inventions,19  and  that  an  improvement  may 
or  may  not  be  an  invention,  and  in  either  case  may  or  may 
not  be  an  infringement  of  a  patent  covering  the  machine 
improved. 

§  17.  The  word  "  manufacture"  has  a  much  narrower 
signification  in  the  American  patent  laws  than  it  has  in 
those  of  England.  In  the  latter  it  includes  not  only  every- 
thing made  by  the  hand  of  man,  but  also  includes  processes 
of  manufacture.  According  to  the  former,  processes  are 
patentable  because  they  are  arts,  while  some  of  the  things 
made  by  the  hand  of  man  are  patentable  as  machines,  and 
some  others  are  patentable  as  compositions  of  matter,  and 
some  others  are  patentable  as  designs.  Whatever  is  made 
by  the  hand  of  man,  and  is  neither  of  these,  is  a  manufac- 
ture, in  the  sense  in  which  that  word  is  used  in  the  Ameri- 
can patent  laws.20    In  spite  of  the  dictum  of  Justice  Grier 

18  Cochrane    v.    Waterman,    1  20  Johnson  v.  Johnston,  60  F.  R. 

McArthur's    Patent    Cases,    53,  620,    1894;    Cincinnati   Traction 

1844.  Co.  v.  Pope,  210  F.  R.  443,  1913; 

19Cantrell  v.  Wallick,  117  U.  S.  International  Mausoleum  Co.  v. 

694,  1886.  Sievert,  213  F.  R.  225,  1914. 


IG  THE   SUBJECT-MATTER   OF    PATENTS       [CHAP.   I. 

in  the  jail  case,-1  this  term  has  lately  been  held  to  include 
building  structures.'--  The  question  has  not,  however, 
been  directly  passed  upon  by  the  Supreme  Court  and  so  of 
course  cannot  be  regarded  as  judicially  settled. 

§  18.  The  phrase  "composition  of  matter,"  as  used  in 
the  statutes,  covers  all  compositions  of  two  or  more  sub- 
stances. It  includes,  therefore,  all  composite  articles, 
whether  they  be  results  of  chemical  union,  or  of  mechani- 
cal mixture,  or  whether  they  be  gases,  fluids,  powders  or 
solids.  To  be  a  proper  subject  of  a  patent,  a  composition 
of  matter  must,  like  a  process,  a  machine,  or  a  manufac- 
ture, be  able  to  endure  the  relevant  tests  of  invention, 
novelty,  and  utility,  which  are  stated  in  the  next  three 
chapters  of  this  book. 

§  19.  The  distinction  between  a  machine  and  a  manu- 
facture cannot  be  so  stated  that  its  application  to  every 
case  would  be  clear  and  satisfactory  to  every  mind.  The 
same  remark  is  true  of  the  distinction  between  manufac- 
tures and  compositions  of  matter.  In  most  instances, 
however,  when  something  is  invented  by  the  mind  and  con- 
structed by  the  hand  of  man,  its  classification  under  some 
one  of  these  heads  is  sufficiently  obvious.  If  an  inventor 
is  certain  that  his  invention  belongs  to  one  or  another  of 
the  three  classes  of  things,  but  is  uncertain  as  to  which, 
no  evil  need  result  from  the  doubt.     No  inventor  needs 

21  Jacobs  v.  Baker,  7  Wallace,  Riter-Conley  Mfg.  Co.,  205  F.  R. 

297,  1868.  531,  1912;  International  Mauso- 

"  Crier  v.  Innes,  170  F.  R.  324,  leum  Co.  v.  Sievert,  213  F.  R. 

1909,  in  which  case,  however,  it  225,  1914. 

was     expressly    held     that    the  See  Turner  v.  Quincy  Market 

sarcophagus  covered  by  the  pat-  Cold  Storage  &  Warehouse  Co., 

ent  was  not  a  species  of  architec-  225    F.    R.    41,    1915.      Contra 

ture;   Riter-Conley   Mfg.   Co.   v.  American  Disappearing  Bed  Co. 

Aiken  (roof  structure  for  sheds),  v.  Arnaelsteen,  182  F.  R.  324,  1910, 

203   F.    R.   699,    1913;  Aiken  v.  reviewing  the  subject. 


CHAP.    I.]         THE    SUBJECT-MATTER    OF    PATENTS  17 

to  state  or  to  know  whether  the  thing  he  has  produced 
is  a  machine,  a  manufacture,  or  a  composition  of  matter, 
provided  he  knows  that  it  is  one  or  the  other  of  these.  A 
seventeen-year  patent  may  be  lawfully  granted  for  a  thing 
which  falls  under  either  designation,  but  it  never  become 
vitally  important  to  determine  to  which  one  of  the  three 
classes  a  particular  thing  really  belongs.22' 

§  20.  Designs  are  patentable  under  Section  4929  of  the 
Revised  Statutes;  as  amended  May  9,  1902.  That  section 
provides  that  any  person  who  has  invented  any  new,  orig- 
inal, and  ornamental  design  for  an  article  of  manufacture 
may,  subject  to  certain  conditions  and  limitations  stated 
in  the  statute,  obtain  a  patent  therefor.23  The  original 
Section  4929,  provided  that  any  person  who,  by  his  own 
industry,  genius,  efforts,  and  expense,  had  invented  and 
produced  any  new  and  original  design  for  a  manufacture, 
bust,  statue,  alto-relievo,  or  bas-relief,  any  new  and  origi- 
nal design  for  the  printing  of  woollen,  silk,  cotton,  or  other 
fabrics,  any  new  and  original  impression,  ornament,  pat- 
ent, print,  or  picture  to  be  printed,  painted,  cast,  or 
otherwise  placed  on  or  worked  into  any  article  of  manu- 
facture, or  any  new,  useful,  and  original  shape  or  configu- 
ration of  any  article  of  manufacture,  might,  subject  to 
certain  conditions  and  limitations  stated  in  that  statute, 
obtain  a  patent  therefor.  That  original  section  was  almost 
a  literal  transcript  of  Section  71  of  the  Consolidated  Patent 
Act  of  1870, 24  except  that  in  the  latter  the  word  "pattern  " 
is  found  in  the  connection  in  which  the  word  "patent" 
is  printed  in  Section  4929.  The  change  from  "pattern" 
to  "patent"  was  doubtless  an  error  of  the  printers  of  the 

22a  See  1  Hopkins  on  Patents,  " 16  Statutes  at  Large,  Ch.  230, 

Section  32.  p.  209. 

23  32  Statutes  at  Large,  Pt.  1, 
Ch.  783,  p.  193. 


18  THE   SUBJECT-MATTER   OF    PATENTS        [CHAP.    I. 

Revised  Statutes.  Those  statutes  were  enacted  us  printed, 
and  not  as  is  the  custom  with  shorter  edicts,  as  engrossed 
in  writing.  The  word  "patent"  is  meaningless  in  that 
connection,  and  patterns,  though  not  mentioned  in  the 
section,  were  doubtless  covered  by  its  other  provisions. 

§21.  In  like  manner  as  Section  4929  of  the  Revised 
Statutes  was  enacted  to  take  the  place  of  Section  71  of  the 
Patent  Act  of  1870,  the  latter  was  passed  to  take  the  place 
of  Section  11  of  the  Patent  Act  of  1861."  The  Act  of  1870 
differed  from  its  predecessor  mainly  in  conferring  upon  any 
person,  the  rights  to  design  patents  which  the  Act  of  1861 
gave  only  to  citizens  and  to  aliens  who,  having  resided  one 
year  in  the  United  States,  had  taken  an  oath  of  intention 
to  become  citizens.  Section  11  of  the  Act  of  1861  was  a 
modification  of  Section  3  of  the  Patent  Act  of  1842,26 
which  latter  was  the  first  American  statute  authorizing 
patents  for  designs. 

§  22.  The  amended  Section  4929  of  the  Revised  Stat- 
utes,26" differs  from  the  original  section,  in  using  the  word 
"ornamental"  to  specify  one  characteristic  which  every 
design  must  have,  and  in  omitting  the  word  "useful," 
from  its  former  place  among  the  charactersitics  which  some 
designs  w7ere  required  to  have,  by  the  original  Section  4929. 
But  the  word  "useful"  in  the  original  section,  did  not 
have  the  meaning  of  the  word  ' '  utilitarian. ' '  The  presence 
of  utility  in  a  design,  did  not  impart  patentability  thereto; 
and  the  absence  of  utility  therefrom,  did  not  deprive  it 
of  that  privilege.27 

25 12  Statutes  at  Large,  Ch.  88,  27  Smith  v.  Whitman  Saddle  Co., 

p.  248.  148  U.  S.  678,  1893;  Theberath  v. 

26  5  Statutes  at  Large,  Ch.  263,  Trimming  Co.,  15  F.  R.  250, 1883; 

p.  543.  Westinghouse  Electric  Mfg.  Co. 

S8°  Act  of  May  9, 1902,  32  Stat.  v.  Triumph  Electric  Co.,  97  F.  R. 

193,  Ch.  783.  102,  1899;  Pelouze  Scale  &  Mfg. 


CHAP.    I.]       THE    SUBJECT-MATTER   OF    PATENTS  1 !) 

Consequently  an  article  which  is  ordinarily  not  visible 
in  its  ordinary  use  is  not  proper  subject-matter  for  a  de- 
sign patent.28  Nor  is  an  article  patentable  as  a  design, 
the  essential  element  of  which  is  a  mechanical  construc- 
tion which  causes  the  article  to  assume  an  ornamental 
shape.29  The  design  patent  may,  however,  be  made  to 
cover  the  ornamental  shape,  as  it  is  of  course  no  objection 
that  it  is  at  the  same  time  useful.30  It  is  questionable, 
however,  whether  an  article  to  which  ornamentation 
would  give  no  value  is  proper  subject-matter  of  a  design 
patent,  as  for  example,  a  horseshoe  calk,31  a  pickaxe,  a 
plough  or  other  articles  coming  within  such  a  category.32 

Co.  v.  American  Cutlery  Co.,  102  Syracuse  &  S.  R.  Co.,  161  F.  R. 

F.  R.  918,  1900;  Rowe  v.  Blodgett  571,  1908. 

&  Clapp  Co.,  112  F.  R.  61,  1901;  29  Royal  Metal  Mfg.  Co.  v.  Art 

Marvel  Co.  v.  Pearl,  114  F.  R.  Metal  Works,  130  F.  R.  778, 1904. 

946,   1902;  Eaton  v.  Lewis,   115  30  Weisgerber  v.  Clowney,   131 

F.  R.  635,  1902.  F.  R.  477,  1904. 

28  Rowe  v.   Blodgett  &  Clapp  31  Williams  Calk  Co.  v.  Kem- 

Co.,  112  F.  R.  61,  1901;  Bradley  merer,  145  F.  R.  928,  1906. 

v.  Eccles,   126  F.  R.  945,   1903;  32  Theodore  W.  Foster  &  Bro. 

Williams  Calk  Co.  v.  Kemmerer,  v.  Tilden-Thurber  Co.,  200  F.  R. 

145  F.  R.  928,  1906;  Williams   v.  54,  1912. 


CHAITHIt   II 


INVENTION 


23.  Invention  necessary  to   pat- 

entability. 

24.  Many  negative  rules,  but  no 

affirmative  rule,  for  deter- 
mining the  presence  or  ab- 
sence of  invention. 

25.  Merc  skill  is  not  invention. 

26.  Circumstances  indicating  dif- 

ference between  invention 
and  skill. 

27.  Excellence  of  workmanship  is 

not  invention. 

28.  Substitution  of  materials  is 

not  invention. 

29.  Exceptions  to  the  last  rule. 

30.  Enlargement    is    not    inven- 

tion. 

31.  Change  of  degree  is  not  inven- 

tion. 
31a.  Exception  to  the  last  rule. 

32.  Aggregation    is    not    inven- 

tion. 

33.  Simultaneousness  of  action  is 

not  necessary  to  inven- 
tion. 

34.  Duplication  is  not  generally 

invention. 

35.  Omission  is  not  generally  in- 

vention. 

36.  Substitution  of  equivalents  is 

not  generally  invention. 


:;7.  New  combination  without 
new  mode  of  operation,  is 
not  invention. 
38.  Using  old  thing  for  new  and 
analogous  purpose  is  not 
invention. 
Cases  to  which  the  last  rule 

does  not  apply. 
Doubts  relevant  to  invention, 
when   otherwise   insoluble, 
are  solved  by  ascertaining 
comparative  utility. 
Form. 
41a.  Proportion. 

42.  Questions    of    invention    are 

questions  of  fact. 

43.  Questions  of  invention  are  in- 

vestigated in  the  light  of 
the  state  of  the  prior  art. 

44.  Joint  and  sole  inventions. 

45.  How  made. 
How  distinguished. 
Suggestions  to  an  inventor. 
Information  sought  by  an  in- 
ventor. 

49.  Mechanical  skill  not  necessary 

to  invention. 

50.  Sole  patent  to  one  joint  in- 

ventor is  void. 

51.  Joint  patent  to  sole  inventor 

and  another  is  void. 


39 


to 


!l 


46. 
47. 
48. 


§  23.  It  has  been  shown  that  the  word  "discovered," 
in  Section  4886  of  the  Revised  Statutes,  has  the  meaning 
20 


CHAP.    II.] 


INVENTION 


21 


of  the  word  "invented."1  It  follows  that  patents  are 
grantable  for  things  invented,  and  not  for  things  otherwise 
produced,2  even  where  the  production  required  ability 
of  a  high  order.3  Novelty  and  utility  must  indeed  char- 
acterize the  subject  of  a  patent,  but  they  alone  are  not 
enough  to  make  anything  patentable;  for  the  statute 
provides  that  things  to  be  patented  must  be  invented 
things,  as  well  as  new  and  useful  things.4  And  except  in 
the  few  cases  where  definite  rules  of  law  have  been  laid 
down  for  the  determination  of  the  question,  invention  is 
a  question  of  fact.5  The  courts  have  therefore  declared 
that  not  all  improvement  is  invention,  and  entitled  to  pro- 
tection as  such,  but  that  to  be  thus  entitled,  a  thing  must 
be  the  product  of  some  exercise  of  the  inventive  faculties.6 
And  the  law  stated  in  this  section  applies  not  only  to 
processes,  machines,  manufactures,  and  compositions  of 
matter,  but  also  to  designs.7    But  a  patent  may  be  sus- 


1  Section  2  of  this  book. 

2  In  re  Snyder,  10  App.  D.  C. 
144,  1897;  Lamb  Knit  Goods  Co. 
v.  Lamb  Glove  &  Mitten  Co.,  120 
F.  R.  272,  1902. 

3  Fowler  v.  City  of  New  York, 
121  F.  R.  749,  1903. 

*  Thompson  v.  Boisselier,  114 
U.  S.  11,  1884;  Gardner  v.  Herz, 
118  U.  S.  191,  1885;  Klein  v.  City 
of  Seattle,  77  F.  R.  204,  1896; 
Tiemann  v.  Kraatz,  85  F.  R.  439, 
1898;  Goss  Printing-Press  Co.  v. 
Scott,  103  F.  R.  657,  1900. 

5  Proudfit  Loose  Leaf  Co.  v. 
Kalamazoo  Loose  Leaf  Binder 
Co.,  230  F.  R.  120,  1915. 

See  Section  42. 

8  Pearce  v.  Mulford,  102  U.  S. 


112,  1880;  Atlantic  Works  v. 
Brady,  107  U.  S.  199,  1882;  Slaw- 
son  v.  Railroad  Co.,  107  U.  S.  649, 
1882;  Morris  v.  McMillin,  112 
U.  S.  247,  1884;  Hollister  v.  Bene- 
dict Mfg.  Co.,  113  U.  S.  59,  1885; 
Stephenson  v.  Railroad  Co.,  114 
U.  S.  149,  1885;  Munson  v.  New- 
York  City,  124  U.  S.  601,  1888; 
Pattee  Plow  Co.  v.  Kingman  & 
Co.,  129  U.  S.  294,  1889;  Watson 
v.  Railway  Co.,  132  U.  S.  161, 
1889;  Hill  v.  Wooster,  132  U.  S. 
700,  1890;  Burt  v.  Evory,  133 
U.  S.  349,  1890;  Magin  v.  Karle, 
150  U.  S.  391,  1893;  Risdon 
Locomotive  Works  v.  Medart, 
158  U.  S.  81,  1895. 
-  Smith  v.  Saddle  Co.,  148  U.  S. 


22 


l\\  I.NTION 


[chap.  II. 


tained  for  an  invention  which  resided  in  a  theory,  without 
a  reduction  to  actual  practice,  at  the  time  the  patent  was 
granted,  if  that  theory  afterward  proves  to  be  correct,8 
and  also  where  the  correctness  of  the  theory  is  self-evident .' 
Not  only  the  first  and  the  last,  but  every  intermediate 
step  of  advance,  which  rises  to  the  dignity  of  invention, 
in  a  particular  art,  is  entitled  to  the  protection  of  a  pat- 
ent.10 And  invention  may  result  from  long  consideration, 
or  from  a  flash  of  thought.11 

§  24.  The  abstract  rule  stated  in  the  last  section  is  as 
certainly  true  as  it  is  universally  just,  but  its  application 
to  particular  cases  cannot  be  made  without  the  guidance 
of  more  concrete  propositions.  In  delivering  an  opinion 
of  the  Supreme  Court,  in  January,  1885,  Justice  Mat- 
thews used  some  language  which  may  be  thought  to  es- 
tablish an  affirmative  rule  by  which  to  determine  the 


679,  1893;  Western  Electric  Mfg. 
Co.  v.  OdeU,  18  F.  R.  322,  1883; 
Osborn  v.  Judd,  29  F.  R.  96,  1886; 
Meers  v.  Kelly,  31  F.  R.  153, 
1887;  Untermeyer  v.  Freund,  37 
F.  R.  343,  1889;  Redway  v.  Stove 
Co.,  38  F.  R.  583,  1889;  Dukes  v. 
Bauerle,  41  F.  R.  783;  1890;  Fos- 
ter v.  Crossin,  44  F.  R.  63,  1890; 
Eclipse  Mfg.  Co.  v.  Adkins,  44 
F.  R.  282,  1890;  Cahoone  Mfg. 
Co.  v.  Harness  Co.,  45  F.  R.  585, 
1891;  Anderson  v.  Saint,  46  F.  R. 
760,  1891;  Eagle  Pencil  Co.  v. 
American  Pencil  Co.,  53  F.  R. 
388,  1892;  Cary  Mfg.  Co.  v.  Neal, 
98  F.  R.  617,  1899;  General  Gas- 
light Co.  v.  Matchless  Mfg.  Co., 
129  F.  R.  137,  1904;  Ashley  v. 
Samuel  C.  Tatum  Co.,  189  F.  R. 
357, 1911;  Mygatt  v.  M.  Schauffer- 


Flaum  Co.,  191  F.  R.  836,  1911; 
Charles  Boldt  Co.  v.  Nivison- 
Weiskoff  Co.,  194  F.  R.  871,  1912; 
Charles  Boldt  Co.  v.  Turner  Bros. 
Co.,  199  F.  R.  139,  1912. 

8  Telephone  Cases,  126  U.  S. 
535,  1888. 

9  Heath  v.  Hildreth,  1  Mc- 
Arthur's  Patent  Cases,  19,  1841; 
Screw  Co.  v.  Sloan,  1  McArthur's 
Patent  Cases,  210,  1853;  In  re 
Seely,  1  McArthur's  Patent  Cases, 
249,  1853;  Chandler  v.  Ladd,  1 
McArthur's  Patent  Cases,  493, 
1857. 

10  National  Hollow  Brake-Beam 
Co.  v.  Interchangeable  Brake- 
Beam  Co.,  106  F.  R.  698, 
1901. 

"Snyder  v.  Fisher,  78  0.  G. 
486,  1897. 


CHAP.    II. J  INVENTION  23 

presence  or  absence  of  invention  in  every  case.  Speaking 
of  a  simple  device  which  the  court  held  not  to  be  an  in- 
vention, he  said  that  it  "seems  to  us  not  to  spring  from  that 
intuitive  faculty  of  the  mind  put  forth  in  search  for  new 
results  or  new  methods,  creating  what  had  not  before 
existed,  or  bringing  to  light  what  lay  hidden  from  vision; 
but,  on  the  other  hand,  to  be  the  suggestion  of  that  com- 
mon experience  which  arose  spontaneously,  and  by  a 
necessity  of  human  reasoning,  in  the  minds  of  those  who 
became  acquainted  with  the  circumstances  with  which 
they  had  to  deal."12  This  language  may  be  thought  to 
mean  that  whatever  new  and  useful  process,  machine, 
manufacture,  composition  of  matter,  or  design  is  produced 
by  intuition  is  an  invention,  and  that  whatever  such  thing 
is  produced  by  reason  is  not  an  invention.  But  such  an 
interpretation  of  the  language  would  not  be  right.  In- 
tuition may  sometimes  reach  to  a  single  brilliant  result; 
but  intuition  can  never  conceive  or  correlate  the  mazes 
of  movements  and  mechanisms  which  constitute  a  modern 
automatic  machine.  To  enforce  such  a  rule  as  that 
hypothetically  implied  in  the  language  of  Justice  Mat- 
thews would  be  to  deny  invention  to  those  marvelous 
combinations  of  numerous  metallic  devices  which  compose 
American  automatic  machinery,  and  which  work  with 
such  complexity  and  yet  with  such  precision  that  they 
seem  themselves  to  be  endowed  with  reason.  But  fortu- 
nately the  supposed  interpretation  of  that  language  is 
evidently  not  the  meaning  of  the  court.  The  court  does 
not  deny  invention  to  all  the  products  of  pure  reason  in 
the  useful  arts.  It  merely  finds  want  of  invention  in  those 
things  which  are  conceived  "  spontaneously  and  by  a 
necessity  of  human  reasoning"  in  the  minds  of  those  who 
have  their  attention  directed  to  the  subject. 

12  Hollister  v.  Benedict  Mfg.  Co.,  113  U.  S.  72,  1885. 


24  INVENTION  [CHAP.    II. 

In  a  later  case  the  Supreme  Court,  speaking  by  Justice 
Brown  of  the  meaning  of  the  word  "invention,"  said: 
"The  truth  is  the  word  cannot  he  defined  in  such  manner 
as  to  afford  any  substantial  aid  in  determining  whether 
a  particular  device  involves  an  exercise  of  the  inventive 
faculty  or  not.  In  a  given  case  we  may  be  able  to  say  that 
f  here  is  present  invention  of  a  very  high  order.  In  another 
we  can  see  that  there  is  lacking  that  impalpable  something 
which  distinguishes  invention  from  simple  mechanical 
skill.  Courts,  adopting  fixed  principles  as  a  guide,  have 
by  a  process  of  exclusion  determined  that  certain  varia- 
tions in  old  devices  do  or  do  not  involve  invention;  but 
whether  the  variation  relied  upon  in  a  particular  case  is 
anything  more  than  ordinary  mechanical  skill  is  a  ques- 
tion which  cannot  be  answered  by  applying  the  test  of 
any  general  definition."13  Thus  it  has  been  settled  by 
the  Supreme  Court  that  the  ideal  line  which  separates 
things  invented  from  things  otherwise  produced  can  never 
be  concisely  defined ;  and  that  there  is  no  affirmative  rule 
by  which  to  determine  the  presence  or  absence  of  inven- 
tion in  every  case;  and  that  such  questions  are  to  be  de- 
termined by  means  of  several  negative  rules  which  operate 
by  a  process  of  exclusion.  Each  of  those  rules  applies  to 
a  large  class  of  cases,  and  all  of  them  are  entirely  au- 
thoritative and  sufficiently  clear.  To  formulate  those 
rules,  and  to  state  their  qualifications  and  exceptions, 
and  to  classify  and  cite  the  adjudged  cases  from 
which  those  rules,  qualifications,  and  exceptions  are 
deducible,  is  the  scope  of  several  sections  which  im- 
mediately follow. 

§  25.  It  is  not  invention  to  produce  a  process,  machine, 
manufacture,  composition  of  matter  or  design  which  any 
skillful  mechanic,  electrician,  chemist,  or  other  expert 
13  McClain  v.  Ortmayer,  141  U.  S.  427,  1891. 


CHAP.    IT.]  INVENTION  25 

would  produce  whenever  required  to  effectuate  a  given 
result. 

In  holding  a  patent  to  be  void  the  Supreme  Court, 
speaking  by  Justice  Bradley,  delivered  a  paragraph  of 
very  instructive  argument  in  support  of  the  rule  of  this 
section :  a  paragraph  so  valuable  as  to  call  for  its  verbatim 
quotation  in  this  text. 

"The  process  of  development  in  manufactures  creates  a 
constant  demand  for  new  appliances,  which  the  skill  of  or- 
dinary head  workmen  and  engineers  is  generally  adequate 
to  devise,  and  which,  indeed,  are  the  natural  and  proper 
outgrowth  of  such  development.  Each  step  forward  pre- 
pares the  way  for  the  next,  and  each  is  usually  taken  by 
spontaneous  trials  and  attempts  in  a  hundred  different 
places.  To  grant  to  a  single  party  a  monopoly  of  every 
slight  advance  made,  except  where  the  exercise  of  invention 
somewhat  above  ordinary  mechanical  or  engineering  skill 
is  distinctly  shown,  is  unjust  in  principle  and  injurious  in 
its  consequences.  The  design  of  the  patent  laws  is  to  re- 
ward those  who  make  some  substantial  discovery  or  inven- 
tion which  adds  to  our  knowledge  and  makes  a  step  in 
advance  in  the  useful  arts.  Such  inventors  are  worthy  of 
all  favor.  It  is  never  the  object  of  those  laws  to  grant  a 
monopoly  for  every  trifling  device,  every  shadow  of  a 
shade  of  an  idea  which  would  naturally  and  spontaneously 
occur  to  any  skilled  mechanic  or  operator  in  the  ordinary 
progress  of  manufactures.  Such  an  indiscriminate  crea- 
tion of  exclusive  privileges  tends  rather  to  obstruct  than 
to  stimulate  invention.  It  creates  a  class  of  speculative 
schemers  who  make  it  their  business  to  watch  the  advanc- 
ing wave  of  improvement,  and  gather  its  foam  in  the  form 
of  patented  monopolies,  which  enable  them  to  lay  a  heavy 
tax  upon  the  industry  of  the  country  without  contribut- 
ing anything  to  the  real  advancement  of  the  arts.     It 


26  INVENTION  [CHAP.    II. 

embarrasses  the  honesl  pursuil  of  business  with  fears  and 
apprehensions  of  concealed  liens  and  unknown  liabilities 
to  lawsuits  and  vexatious  accountings  for  profits  made  in 

good  faith."  " 

This  opinion  of  Justice  Bradley  is  now  a  classic.  Many 
federal  judges,  during  twenty  years,  have  administered  it 
as  law;  and  some  have  paraphrased  it  in  sound  and  sug- 
gestive language  of  their  own.  For  example,  Judge 
Phillips  has  said  that :  "In  this  day  of  increasing  demand 
for  new  and  enlarged  mechanical  appliances,  the  first 
natural  result  is  the  production  of  a  large  class  of  skilled 
and  experienced  mechanics  and  artisans,  and,  second,  a 
more  studious  and  constant  development  in  applied  me- 
chanics. And,  as  such  advance  plainly  points  out,  to  the 
attentive  and  assiduous  workman,  the  natural,  larger, 
practical  adaptation  of  existing,  known  mechanical  de- 
vices; to  invest  each  one  of  these  developments  with  the 
immunity  of  a  monopolizing  patent,  would  not  only  be  a 
perversion  of  the  term  "invention,"  but  would  utterly  ex- 
tinguish the  doctrine  of  mechanical  equivalents."  ls  And 
Judge  Coxe  has  said  that  a  chemical  patent  is  addressed 
to  accomplished  chemists;  and  "That  which  seems,  to  the 
ordinary  layman,  to  involve  the  exercise  of  extraordinary 
mental  power,  is  to  these  men  nothing  but  the  everyday 
work  of  laboratory  routine."  ,f>  And  Judge  Townsend 
has  said  that  an  electrical  patent  should  be  stripped  of 
the  dazzling  halo  which  conventionally  adorns  appliances 
designed  to  deal  with  that  mysterious  agent,  electricity; 
when  a  court  is  called  on  to  decide  the  question  of  the  pres- 
ence or  absence  of  invention,  in  an  electrical  patent.17 

14  Atlantic  Works  v.  Brady,  107  16  Badische  Anilin  &  Soda 
U.  S.  199,  1882.                                   Fabrik  v.  Kalle,  94  F.   R,   173, 

15  Tiemann  v.  Kraatz,  85  F.  R.      1899. 

439,  1898.  "  Perkins  Electric  Switch  Mfg. 


CHAP.    II.]         •  INVENTION  27 

Nearly  a  hundred  other  cases,  involving  the  rule  of  this 
section,  have  now  been  adjudicated  and  reported.  The 
question  whether  a  particular  process,  machine,  manu- 
facture, composition  of  matter  or  design,  evinces  invention, 
or  only  shows  skill,  may  sometimes  be  decided  by  reason- 
ing by  analogy  from  some  of  those  cases;  and  therefore 
those  of  them  which  were  decided  by  the  Supreme  <  Jourt 
are  cited  on  this  page  in  a  note. 18 

The  absence  of  invention  may  be  established  in  some 
cases,  by  evidence  that  a  considerable  number  of  persons 
who  were  not  inventors,  acting  independently  of  each 
other,  and  without  receiving  any  information  from  the 
patentee  or  his  patent,  did  in  fact  contrive  the  improve- 
ment claimed  therein,  not  long  after  he  produced  it.19 
And  where  that  does  not  happen  to  be  the  case,  want  of 
invention  can  be  proved  by  teaching  a  mechanic  or  other 
person  the  whole  or  a  part  of  the  prior  art,  and  by  proving 
that,  without  exercising  any  invention,  he  promptly  pro- 
Co.  v.  Gibbs  Electric  Mfg.  Co.,  87  Nashawannuck  Mfg.  Co.,  137 
F.  R.  923,  1898.  U.    S.    59,     1890;    Consolidated 

ls  The  Corn-Planter  Patent,  23  Roller  Mill  Co.  v.  Walker,  13S 
Wallace,  232,  1874;  Vinton  v.  U.  S.  132,  1891;  Cluett  v.  Claflin, 
Hamilton,  104  U.  S.  491,  1881;  140  U.  S.  180,  1891;  Magowan  v. 
Tack  Co.  v.  Mfg.  Co.,  109  U.  S.  Belting  Co.,  141  U.  S.  343,  1891 : 
119,  1883;  Morris  v.  McMillin,  Pope  Mfg.  Co.  v.  Gormully  Mfg. 
112  U.  S.  244,  1884;  Hollister  v.  Co.,  144  U.  S.  259,  1892;  Ryan  r. 
Benedict  Mfg.  Co.,  113  U.  S.  72,  Hard,  145  U.  S.  246,  1892;  Duer 
1885;  Yale  Lock  Co.  v.  Greenleaf,  v.  Lock  Co.,  149  U.  S.  222,  1893; 
117  U.  S.  554,  1886;  Pomace  Leggett  v.  Standard  Oil  Co.,  149 
Holder  Co.  v.  Ferguson,  119  U.  S.  U.  S.  295, 1893;  Sargent  v.  Covert . 
335,  1886;  Weir  v.  Morden,  125  152  U.  S.  516,  1894;  Palmer  v. 
U.  S.  98,  1888;  Brown  v.  District  Corning,  156  U.  S.  342,  1895. 
of  Columbia,  130  U.  S.  87,  1889;  19  Bromley  Bros.  Carpet  Co.  v. 

Day  v.  Railroad  Co.,  132  U.  S.  Stewart,  51  F.  R.  915,  1892;  Ha^- 
102,  1889;  Butler  v.  Steckel,  137  lem  v.  Pittsburgh  Plate  Gla<> 
U.    S.    29,     1890;    Shenfield    v.      Co.,  71  O.  G.  1770,  1894. 


28  i w  i:\tion  [chap.  ii. 

duced  the  patented  improvement,  without  any  knowledge 
on  the  subject  except  what  he  had  thus  learned.20  But 
it  does  not  tend  to  prove  want  of  invention,  to  show  that  a 
skillful  mechanic  who  had  seen  the  patented  thing,  can 
reconstruct  some  older  thing  so  as  to  make  it  similar  to 
that  covered  by  the  patent.-1 

§  26.  But  if  a  particular  result  was  long  desired  and 
sometimes  sought,  but  never  attained,  want  of  invention 
cannot  be  predicated  of  a  device  or  process  which  first 
reached  that  result,  on  the  ground  that  the  simplicity 
of  the  means  is  so  marked  that  many  believe  they 
could  readily  have  produced  it  if  required.22  That  is 
the  opinion  of  many  relevant  to  some  real  inventions, 
because  solved  problems  often  seem  easy  to  persons  who 
could  never  have  solved  them,  and  true  inventions  some- 
times seem  obvious  to  persons  who  could  never  have  pro- 
duced them.23  This  doctrine  does  not  contradict  that 
of  the  last  section.  It  only  teaches  us  that  the  fact  upon 
which  the  doctrine  of  the  last  section  is  founded  cannot 
be  proved  by  subsequent  opinion,  when  that  opinion  is 
inconsistent  with  prior  attempts  and  failures. 

In  The  Loom  Co.  v.  Higgins,21  Justice  Bradley  re- 
marked that:  "It  may  be  laid  down  as  a  general  rule, 
though  perhaps  not  an  invariable  one,  that  if  a  new  com- 
bination and  arrangement  of  known  elements  produce  a 
new  and  beneficial  result,  never  attained  before,  it  is 

20  National  Co.  v.  Belcher,  68  1893;  Potts  v.  Creager,  155  U.  S. 
F.  R.  668,  1895.  609,  1895;  Du  Bois  v.  Kirk,  158 

21  Beach  v.  Box-Machine  Co.,  U.  S.  63,  1895;  Hanifen  v.  Ar- 
63  F.  R.  601,  1894;  National  Co.  mitage,  117  F.  R.  849,  1902. 

v.  Belcher,  71  F.  R.  879,  1896.  See  Section  42. 

22  The  Barbed  Wire  Patent,  143  23  Railroad  Supply  Co.  v.  Hart 
U.  S.  283,  1892;  Gandy  v.  Belting  Steel  Co.,  222  F.  R.  261,  1915. 
Co.,  143  U.  S.  594,  1892;  Krem-  2<  Loom   Co.    v.    Higgins,    105 
entz  v.  Cottle  Co.,  148  U.  S.  560,  U.  S.  591,  1881. 


CHAP.    II.]  INVENTION  29 

evidence  of  invention."  The  exception  to  this  rule,  which 
Justice  Bradley  contemplated,  doubtless  refers  to  cases, 
the  result  wherein  was  never  before  attained  only  be- 
cause it  was  never  before  desired.  In  the  circuit  court 
cases  which  support  the  doctrine  of  this  section,  the  pro- 
viso that  the  thing  or  process  which  the  patentee  was  the 
first  to  produce,  had  been  previously  sought  for  by  others 
in  vain,  is  never  overlooked,  but,  on  the  contrary,  is 
always  treated  as  a  material  element  in  the  proposition.2'' 
So  also,  the  statement  of  Justice  Bradley  would  still 
have  been  correct,  if  it  had  omitted  the  words  which  it 
contains  to  designate  novelty  of  result;  for  where  a  new 
organization  of  old  elements  produces  a  new  mode  of 
operation,  and  a  beneficial  result,  there  may  be  a  patent- 
able invention,26  whether  that  result  is  new  or  is  old. 

A  qualification  of  the  rule  of  this  section  consists  in  the 
subordinate  point,  that  where  several  improvements  have 
mutually  contributed  to  introduce  an  unused  invention 
into  public  favor,  and  where  it  does  not  appear  that  either 
of  those  improvements  alone  would  have  produced  that 

25  Terry    Clock    Co.    v.    New  ican  Cable  Ry.  Co.  v.  New  York, 

Haven  Clock  Co.,  4  Bann.  &  Ard.  56  F.  R.  150,  1893;  Stohlmann  v. 

121,  1879;  Wallace  v.  Noyes,  13  Parker,  53  F.  R.  925,  1893;  West- 

F.  R.   180,  1882;  Ward  v.  Plow  inghouse    v.    Air-Brake    Co.,    59 

Co.,  14  F.  R.  696,  1883;  Davis  v.  F.  R.  581,  1893;  Electric  Ry.  Co. 

Fredericks,   19  F.   R.   99,   1884;  v.  Jamaica  R.  R.  Co.,  61  F.  R. 

Patterson  v.  Duff,  20  F.  R.  641,  670,  1894;  Brill  v.  North  Jersey 

1884;  Brown  Mfg.  Co.  v.  Deere,  St.  Ry.  Co.,  124  F.  R.  778,  1903. 

21  F.  R.  713,  1884;  McFarland  v.  20  Dowagiac  Mfg.  Co.  v.  Minne- 

Spencer,    23    F.    R.    151,    1885;  sota  Moline  Plow  Co.,  118  F.  R. 

Celluloid  Mfg.  Co.  v.  Chrolithion  139,  1902;  St.  Louis  Street,  etc., 

Collar  &  Cuff  Co.,  23  F.  R.  397,  Co.  v.  Am.  Street,  etc.,  Co.,  156 

1885;    Sewing    Machine    Co.    v.  F.  R.  574, 1907;  Steiner  &  Voegtly 

Frame,  24  F.  R.  596,  1884;  Asmus  Hardware  Co.  v.  Tabor  Sash  Co., 

v.  Alden,  27  F.  R.  687,  1886;  Adee  178  F.  R.  831,  1910. 

v.  Peck,  42  F.  R.  499,  1890;  Amer-  See  Section  37. 


30  [NVENTION  [CHAP.    II. 

result,  do  presumption  in  favor  of  either  of  those  improve- 
ments being  an  invention,  arises  <>ut  <>f  the  commercial 
success  of  the  invention  thus  improved.-7  And  another 
qualification  resides  in  holding  that  the  rule  of  the  section 
does  not  apply  where  the  prior  attempts  were  unsuccessful 
because  they  were  unskillful,28  or  because  those  who 
made  them,  did  not  know  and  understand  the  prior  art . '"' 

§  27.  It  is  not  invention  to  produce  an  article  which 
differs  from  some  older  thing  only  in  excellence  of  work- 
manship.30 

The  distinction  between  this  rule,  and  the  rule  of  Sec- 
tion 25,  resides  in  the  fact  that  mechanical  skill  is  treated 
as  ability  to  plan  improvement;  while  excellence  of  work- 
manship is  contemplated  as  ability  to  execute  improve- 
ment already  planned,  but  not  well  executed  by  him  who 
planned  it.  This  subject  does  not  require  an  elaborate 
explanation;  because  it  is  evident  that  invention  does  not 
reside  in  taking  an  article  so  irregular  or  rough,  that  it 
never  could  have  found  a  sale  in  the  market,  and  exercis- 
ing upon  that  article  such  superiority  of  workmanship 
as  to  make  it  commercial.31 

§  28.  It  is  not  invention  to  substitute  superior  for  in- 
ferior materials,  in  making  one  or  more  or  all  of  the  parts 
of  a  machine  or  manufacture. 

27  Corbin  Lock  Co.  v.  Eagle  New  Departure  Bell  Co.  v.  Bevin 
Lock  Co.,  37  F.  R.  338,  1889.  Bros.   Mfg.   Co.,  73  F.  R.   475, 

See  Section  40.  1896. 

28  Butler  v.  Steckel,  137  U.S.  30  Edison  v.  American  Muto- 
29,  1890;  American  Feather  Dus-  scope  Co.,  114  F.  R.  935,  1902. 
ter  Co.  v.  Levy,  43  F.  R.  383, 1890;  31  Risdon  Locomotive  Works  v, 
Mahon  v.  McGuire  Mfg.  Co.,  51  Medart,  158  U.  S.  81,  1895;  Buz- 
F.  R.  684,  1892;  Johnson  Co.  v.  zell  v.  Fifield,  7  F.  R.  467,  1881; 
Steel  Co.,  67  F.  R.  942,  1895.  Hatch  v.  Moffitt,  15  F.  R.  252, 

29  Mast  Foos  &  Co.  v.  Stover  1883;  Lee  v.  Upson  Hart  Co.,  42 
Mfg.  Co.,   177  U.  S.  493,   1900;  F.  R.  531,  1890. 


CHAP.    II. 


INVENTION 


::i 


In  most  of  the  cases  which  embody  this  rule,  the  sub- 
stitution of  materials  was  both  new  and  useful ;  and  in  some 
of  those  cases,  the  increase  of  utility  due  to  the  substitu- 
tion, was  decidedly  high.  But  the  courts  held  the  re- 
spective improvements  to  be  the  result  of  judgment  and 
skill  in  the  selection  and  the  adaptation  of  materials,  and 
not  the  product  of  the  inventive  faculties  of  those  who 
made  them.32 

There  being  no  invention  in  substituting  superior  for 
inferior  materials,  there  is  certainly  none  in  selecting  from 
a  number  of  materials  recommended  by  a  prior  patentee, 
that  one  which  is  best  adapted  to  the  purpose  in  view;33 
and  none  in  substituting  one  well-known  form  of  a  par- 
ticular material,  for  another  well-known  form  of  the  same 
material.34 

§  29.  Important  exceptions  have,  however,  been  estab- 


32  Hotchkiss  v.  Greenwood,  11 
Howard,  248,  1850;  Hicks  v.  Kel- 
sey,  18  Wallace,  670,  1873;  Ter- 
hune  v.  Phillips,  99  U.  S.  593, 
1878;  Gardner  v.  Herz,  118  U.  S. 
192,  1885;  Brown  v.  District  of 
Columbia,  130  U.  S.  87,  1889; 
Florsheim  v.  Schilling,  137  U.  S. 
76,  1890;  Hoff  v.  Iron  Clad  Mfg. 
Co.,  139  U.  S.  329,  1891;  Ryan  v. 
Hard,  145  U.  S.  245,  1892;  In  re 
Maynard,  1  McArthur's  Patent 
Cases,  536,  1857;  Post  v.  Hard- 
ware Co.,  26  F.  R.  616,  1886; 
Forschner  v.  Baumgarten,  26  F.  R. 
858,  1886;  J.  L.  Mott  Iron  Works 
v.  Cassidy,  31  F.  R.  47,  1887;  Na- 
tional Roofing  Co.  v.  Garwood,  35 
F.  R.  658,  1888;  Kilbourne  v. 
Bingham  Co.,  47  F.  R.  57,  1891; 


Vulcanized  Fiber  Co.  v.  Taylor, 
49  F.  R.  744,  1891;  Thomson- 
Houston  Electric  Co.  v.  Lorain 
Steel  Co.,  117  F.  R.  254,  1902; 
National  Tooth  Crown  Co.  v. 
Macdonald,  117  F.  R.  617,  1902; 
Drake  Castle  Pressed  Steel  Lug 
Co.  v.  Brownell  &  Co.,  123  F.  R. 
87,  1903;  Lafferty  Mfg.  Co.  v. 
Acme,  etc.,  Co.,  138  F.  R.  729, 
1905;  New  York  Belting  Co.  v. 
Sierer,  149  F.  R.  756,  1906; 
Cover  v.  American  Thermo-Ware 
Co.,  188  F.  R.  670,  1911. 

33  Welling  v.  Crane,  14  F.  R. 
571,  1882. 

34  Brush  Electric  Co.  v.  Julien 
Electric  Co.,  41  F.  R.  693,  1890: 
Brush  Electric  Co.  v.  Accumu- 
lator Co,  47  F.  R.  50,  1891. 


32  INVENTION  [CHAP.    II. 

lished  to  the  general  rule  of  the  last  section.  If  the  sub- 
si  itution  of  materials  involved  a  new  mode  of  construction, 
or  if  it  developed  new  properties  and  uses  of  the  article 
made,  it  may  amount  to  invention.35  And  substitution 
of  materials  may  constitute  invention,  where  it  produces 
a  new  mode  of  operation,  or  results  in  a  new  function,88 
or  in  the  first  practical  success  in  the  art  in  which  the  sub- 
stitution is  made,37  or  in  increased  efficiency  or  in  a  decided 
saving  in  cost  of  operation.38  So  also,  where  the  excel- 
lence of  the  material  substituted  could  not  be  known  be- 
forehand, and  where  practice  shows  its  superiority  to 
consist  not  only  in  greater  cheapness  and  greater  dur- 
ability, but  also  in  more  efficient  action,  the  substitu- 
tion of  a  superior  for  an  inferior  material  amounts  to 
invention.39 

It  may  or  may  not  be  invention  to  substitute  one  ma- 
terial for  another,  as  an  agent  in  performing  a  process,  or 
as  an  ingredient  of  a  composition  of  matter.  The  question 
of  invention  in  any  such  case,  is  to  be  decided  by  some 
other  rule  or  rules,  than  that  of  the  substitution  of  ma- 
terials. 

§  30.  It  is  not  invention  to  so  enlarge  and  strengthen  a 

35  Smith   v.    Dental    Vulcanite  F.   R.   308,   1892;  George  Frost 

Co.,  93  U.  S.  496, 1876;  Fairbanks  Co.  v.  Cohn,  119  F.  R.  505,  1902; 

Wood  Rim  Co.  v.  Moore,  78  F.  R.  Western  Tube  Co.  v.  Rainer,  156 

490,  1897;  Badische  Anilin  &  Soda  F.  R.  49,  1907. 

Fabrik  v.  Kalle,  94  F.   R.   164,  38  George  Frost  Co.  v.  Samstag, 

1899;    Hogan    v.    Westmoreland  180  F.  R.  739,  1910. 

Specialty   Co.,    163   F.    R.   289,  39  Dalton  v.  Nelson,  13  Blatch. 

1908;  Archer  v.  Imperial  Machine  357,  1876;  Celluloid  Mfg.  Co.  v. 

Co.,  207  F.  R.  81,  1913.  American  Zylonite  Co.,  35  F.  R. 

3«  Potts  v.  Creager,  155  U.  S.  301,  1888;  Celluloid  Mfg.  Co.  v. 

609,   1895;  Wickelman  v.  A.  B.  Crane  Chemical  Co.,  36  F.  R.  110, 

Dick  Co.,  88  F.  R.  264,  1898.  1888;  King  v.  Anderson,  90  F.  R. 

37  Edison  Electric  Light  Co.  v.  503,  1898.    • 

U.  S.  Electric  Lighting  Co.,  52  See  Section  31a. 


CHAP.    II. J  INVENTION  33 

machine  that  it  will  operate  on  larger  materials  than 
before.40 

In  Phillips  v.  Page41  the  patent  covered  the  first  circular 
sawmill  which  was  adapted  to  sawing  logs.  Its  utility 
was  great,  and  was  unquestioned.  Machines  like  it, 
except  that  they  were  much  smaller  in  every  part,  had  been 
used  before,  to  saw  lath  and  other  slender  articles  out  of 
small  blocks  of  wood.  The  Supreme  Court  therefore  held 
that  Mr.  Page  did  not  invent  a  circular  sawmill,  but 
merely  constructed  one,  by  copying  on  a  larger  scale  the 
prior  machine  for  sawing  lath. 

In  the  case  of  the  Planing  Machine  Co.  v.  Keith,42  the 
patent  covered  the  Woodbury  planing  machine,  a  machine 
which  differed  from  the  older  Woodworth  planing  machine 
in  one  respect  only.  Woodworth  used  rollers  to  press  the 
boards  against  the  bed  of  the  machine,  whereas  Woodbury 
used  pressure  bars  for  that  purpose.  The  Supreme  Court 
held  the  Woodbury  patent  to  be  void  because  Alfred  An- 
son, of  Norwich,  Connecticut,  had  previously  invented  and 
constructed  a  machine  for  dressing  window-sash,  which 
had  pressure  bars  like  Woodbury,  instead  of  pressure 
rollers  like  Woodworth.  This  decision  was  made  not- 
withstanding the  fact  that  the  Anson  machine  was 
too  small  and  too  weak  for  general  planing  work  upon 
boards  and  planks.  And  this  rule  has  been  applied, 
and  is  well  illustrated,  in  several  other  Supreme  Court 
cases 


43 


§  31.  It  is  not  invention  to  change  the  size  or  degree  of 

40  American  Well  Works  v.  F.  C.  42  Planing  Machine  Co.  v.  Keith, 
Austin  Mfg.  Co.,  98  F.  R.  993,      101  U.  S.  490,  1879. 

1900.  "Peters  v.  Active  Mfg.   Co., 

41  Phillips  v.  Page,  24  Howard,      129  U.  S.  530,  1889;  Morgan  En- 
164,  1860.  velope  Co.  v.  Albany  Paper  Co., 

152  U.  S.  430,  1894. 


34  INVENTION  [CHAP.    II. 

a  thing,  or  of  any  feature  or  function  of  a  machine  or 
manufacture." 

In  Glue  Co.  v.  Upton  r°  the  patent  covered  pulverized 
glue  made  from  flake  glue  by  grinding  it  in  any  suitable 
manner.  It  had  .several  points  of  superiority  over  all 
former  kinds  of  glue,  but  the  Supreme  Court  held  that, 
not  being  a  product  of  invention,  the  patent  covering  it 
was  void. 

In  Guidet  v.  Brooklyn  4fi  the  patent  covered  paving- 
stones  of  a  certain  shape  and  with  rough  sides.  Paving- 
stones  of  the  same  shape,  but  with  sides  less  rough,  had 
been  known  before.  To  make  the  sides  of  the  prior  stones 
rougher  was  held  by  the  Supreme  Court  to  be  a  change  in 
degree  only,  and  therefore  not  patentable. 

In  Estey  v.  Burdett,47  one  of  the  claims  of  the  patent  in- 
volved, depended  upon  concentrating  certain  valve  open- 
ings into  a  smaller  space  than  had  theretofore  been  oc- 
cupied by  them.  The  Supreme  Court  held  that  there  was 
no  invention  in  that  change. 

In  Preston  v.  Manard  48  the  alleged  invention  consisted 
in  making  the  reel  of  a  fountain  hose-carriage  of  larger 
diameter  than  were  the  reels  of  former  hose-carriages,  in 

"Baldwin  v.  Kresl,  76  F.  R.  Zinc  Co.,   179  F.  R.  850,  1910; 

826,      1896;     Thomson-Houston  Young  v.  Burley,  200  F.  R.  258, 

Electric  Co.  v.  Nassau     Electric  1912;  Hyde  v.  Minerals  Separa- 

R.  Co.,  98  F.  R.  Ill,  1899;  Rum-  tion  Co.,  Ltd.,  214  F.   R.    100, 

ford  Chemical  Works  v.   N.  Y.  1914. 

Baking  Powder  Co.,   125  F.  R.  46  Glue  Co.  v.  Upton,  97  U.  S. 

231,  1903;  Neptune  Meter  Co.  v.  6,  1877. 

National  Meter  Co.,   127  F.  R.  «  Guidet  v.  Brooklyn,  105  U.  S. 

563,  1904;    Sloan    Filter    Co.    v.  552,  1881. 

Portland  Gold  Mining  Co.,  139  47  Estey  v.  Burdett,  109  U.  S. 

F.    R.    23,    1905;   Yost   Electric  640,  1884. 

Mfg.  Co.  v.  Perkins  Electric  S.  48  Preston  v.  Manard,  116  U.  S. 

Mfg.  Co.,  179  F.  R.  511,  1910;  663,  1886. 
Neureuther     v.     Mineral     Point 


CHAP.    II.]  INVENTION  35 

order  to  allow  the  water  to  pass  through  the  hose  when 
partly  wound  upon  the  reel.  The  Supreme  Court  held 
that  there  resided  no  invention  in  that  improvement. 

In  French  v.  Carter,49  the  patent  claimed  a  roof  for  a 
vault,  which  consisted,  like  an  earlier  roof,  of  two  gable- 
stones,  and  two  sloping  roof-stones,  and  one  cap-stone; 
and  which  differed  from  the  earlier  roof  in  that  its  roof- 
stones  were  narrower,  and  its  cap-stone  was  wider,  than 
the  corresponding  stones  of  the  earlier  vault.  The  Su- 
preme Court  held  that  these  differences  of  degree  did  not 
constitute  invention. 

In  American  Road  Machine  Co.  v.  Pennock  &  Sharp 
Co.,50  the  patent  claimed  various  combinations,  in  each  of 
which  a  very  heavy  hand-wheel  was  the  distinguishing 
element.  The  extra  weight  of  the  wheel  gave  it  a  useful 
momentum  in  the  combination;  but  the  Supreme  Court 
held  that  it  was  not  invention  to  increase  the  weight  of  a 
hand-wheel  for  that  purpose. 

Circuit  Court  cases  which  have  been  decided  by  skillful 
judges  furnish  still  other  illustrations  of  the  rule  of  this 
section.51 

It  may  or  may  not  be  invention  to  change  the  degree  of 
heat,  or  other  agent,  used  in  a  process,52  or  to  change  the 
amount  of  an  ingredient  used  in  a  composition  of  matter,53 

«  French  v.  Carter,   137  U.  S.  35  F.  R.  423,  1888;  Blumenthal  v. 

239,  1890.  Burrell,    43    F.    R.    669,    1890; 

50  American  Road  Machine  Co.  Murphy  v.  Trenton  Rubber  Co., 
v.  Pennock  &  Sharp  Co.,  164  U.  S.  45  F.  R.  571,  1891;  Caverly  v. 
26,  1896.  Deere,  52  F.  R.  763,  1892. 

51  Stow  v.  City  of  Chicago,  3  52  Musgrave  &  Nye  v.  Commis- 
Bann.  &  Ard.  91,  1877;  White  v.  sioner  of  Patents,  78  O.  G.  2047, 
Lee,  14  F.  R.  790,  1882;  Woon-  1897;  De  Lamar  v.  De  Lamar 
socket  Rubber  Co.  v.  Candee,  23  Mining  Co.,  117  F.  R.  240, 
F.  R.  797,  1885;  Smith  v.  Murray,  1902. 

27  F.  R.  69,  1886;  Hurd  v.  Snow,  *«  National   Newsboard  Co.  v. 


36  INVENTION  [CHAP.    II. 

or  to  change  the  size  of  a  feature  of  a  design.  The  question 
of  presence  or  absence  of  invention,  in  every  such  case,  is 
to  be  decided  by  the  application  of  some  other  rule  or 
rules,  than  that  of  this  section. 

§  31a.  A  meritorious  exception,  to  the  rule  of  the  last 
section,  is  involved  in  the  adjudicated  validity  of  the 
Edison  incandescent  light  patent.'' '  The  carbon  filament 
which  constitutes  the  only  new  part  of  the  combination  of 
the  second  claim  of  that  patent,  differs  from  the  earlier 
carbon  burners  of  Sawyer  and  Man,  only  in  having  a 
diameter  of  one-sixty-fourth  of  an  inch  or  less,  whereas 
the  burners  of  Sawyer  and  Man  had  a  diameter  of  one- 
thirty-second  of  an  inch  or  more.  But  that  reduction  of 
one-half  in  diameter  increased  the  resistance  of  the  burner 
four-fold,  and  reduced  its  radiating  surface  two-fold,  and 
thus  increased  eight-fold,  its  ratio  of  resistance  to  radiating 
surface.  That  eight-fold  increase  of  proportion,  enabled 
the  resistance  of  the  conductor  of  electricity  from  the 
generator  to  the  burner,  to  be  increased  eight-fold,  without 
any  increase  of  percentage  of  loss  of  energy  in  that  con- 
ductor, or  decrease  of  percentage  of  development  of  heat 
in  the  burner;  and  thus  enabled  the  area  of  the  cross 
section  of  that  conductor  to  be  reduced  eight-fold,  and 
thus  to  be  made  with  one-eighth  of  the  amount  of  copper 
or  other  metal,  which  would  be  required  if  the  reduction 
of  diameter  of  the  burner  from  one-thirty-second  to  one- 
sixty-fourth  of  an  inch  had  not  been  made.  And  that 
great  reduction  in  the  size  and  cost  of  conductors,  involved 
also  a  great  difference  in  the  composition  of  the  electric 
energy  employed  in  the  system;  that  difference  consisting 

Elkhart  Egg  Case  Co.,  123  F.  R.  F.  R.  300,  1892;  also  see  Toledo 

432,  1903.  Computing   Scale    Co.   v.    Com- 

54  Edison  Electric  Light  Co.  v.  puting  Scale  Co.,  208  F.  R.  410, 

U.  S.  Electric  Lighting  Co.,  52  1913. 


CHAP.    II.]  INVENTION  37 

in  generating  the  necessary  amount  of  electrical  energy 
with  comparatively  high  electro-motive  force,  and  com- 
paratively low  current,  instead  of  contrarywise.  For 
this  reason,  the  use  of  carbon  filaments,  one-sixty-fourth 
of  an  inch  in  diameter  or  less,  instead  of  carbon  burners 
one-thirty-second  of  an  inch  in  diameter  or  more,  not  only 
worked  an  enormous  economy  in  conductors,  but  also 
necessitated  a  great  change  in  generators,  and  did  both 
according  to  a  philosophy,  which  Edison  was  the  first  to 
know,  and  which  is  stated  in  this  paragraph  in  its  simplest 
form  and  aspect,  and  which  lies  at  the  foundation  of  the 
incandescent  electric  lighting  of  the  world. 

Another  exception  based  on  similar  principles  to  the 
last  is  found  where  an  old  result  is  accomplished  in  a  more 
facile,  economical  and  efficient  way.  Cheapness  of  con- 
struction, simplicity  of  construction,  and  operation  and 
ease  of  operation  as  compared  with  prior  structures  are 
all  indications  of  invention.55 

§  32.  Aggregation  is  not  invention;  either  in  processes,  56 
machines,57  or  manufactures.58 

In  Hailes  v.  Van  Wormer  59  the  patents  passed  upon, 
covered  certain  self-feeding  coal  stoves.    These  stoves  were 

55  James  Heekin  Co.  v.  Baker,  H.  &  C.  Mach.  Co.  v.  King  Bridge 

138    F.    R.    63,    1905;    Electric  Co.,  107  F.  R.  504, 1901;  National 

Candy   Machine   Co.   v.   Morris,  Tube  Co.   v.   Aiken,   163   F.   R. 

156  F.   R.   972,   1905;   National  254,  1908;  Gas  Machinery  Co.  v. 

Tube  Co.  v.  Aiken,  163  F.  R.  254,  United   Gas    Improvement   Co., 

1908;  Acme  Steel  Goods  Co.  v.  228  F.  R.  684,  1915. 

Am.   Metal   Fasteners   Co.,   206  58Antisdel    v.    Chicago    Hotel 

F.  R.  478,  1913.  Cabinet    Co.,    89    F.    R.    312, 

See  Section  29.  1898. 

58  In  re  Mond,  16  App.  D.  C.  69  Hailes  v.   Van  Wormer,   20 

354,  1900.  Wallace,  353,  1873;  also,  Warner 

57  Overweight    Counterbalance  Instrument    Co.    v.    Stewart    & 

El.    Co.    v.    Henry   Vogt    Mach.  Clark  Mfg.  Co.,  185  F.  R.  507, 

Co.,  102  F.  R.  961,  1900;  Brown  1911. 


38  INVENTION  [<HAP.    II. 

better  than  any  which  preceded  them,  because  they  con- 
tained more  good  things  than  were  ever  before  assembled 
in  that  kind  of  heater.  All  of  the  things  so  assembled  were 
old.  The  superiority  of  the  patented  stoves  arose;  from 
the  fact  that  sundry  good  features,  theretofore  scattered 
through  several,  were  in  them  gathered  into  one  such 
article  of  manufacture.  The  things  so  united  did  not, 
however,  perform  any  joint  function,  but  each  did  only 
what  it  had  formerly  done  in  former  stoves.  The  Supreme 
Court  held  the  whole  to  be  a  mere  aggregation  of  devices, 
and  not  to  be  invention. 

The  case  of  Reckendorfer  v.  Faber 60  was  based  upon  pat- 
ents for  a  new  and  useful  article,  of  which  many  millions  of 
specimens  had  been  made  and  sold  since  those  patents 
were  granted.  That  article  was  a  piece  of  soft  rubber 
united  to  one  end  of  a  lead  pencil.  The  Supreme  Court 
called  attention  to  the  fact  that  there  was  no  joint  opera- 
tion performed  by  the  pencil  and  the  rubber,  and  therefore 
held  the  patents  to  be  void  for  want  of  invention. 

In  Pickering  v.  McCullough  fil  Justice  Matthews  said: 
"In  a  patentable  combination  of  old  elements,  all  the  con- 
stituents must  so  enter  into  it  as  that  each  qualifies  every 
other;  to  draw  an  illustration  from  another  branch  of  the 
law,  they  must  be  joint  tenants  of  the  domain  of  invention, 
seized  each  of  every  part,  per  my  et  per  tout,  and  not  mere 
tenants  in  common,  with  separate  interests  and  estates. 
It  must  form  either  a  new  machine  of  a  distinct  character 
and  function,  or  produce  a  result  due  to  the  joint  and  co- 
operating action  of  all  the  elements,  and  which  is  not  the 
mere  adding  together  of  separate  contributions." 

The  first  of  these  sentences  has  been  thought  to  imply  a 
severer  doctrine  than  the  second,  and  some  of  the  lower 

60  Reckendorfer  v.  Faber,  92  6l  Pickering  v.  McCullough,  104 
U.  S.  357,  1S75.  U.  S.  318,  1881. 


CHAP.    II.]  INVENTION  39 

courts  have  inclined  to  ascribe  to  the  opinion  a  milder  sig- 
nification than  the  first  sentence  standing  alone  may  ap- 
pear to  warrant. 

The  Circuit  Court  of  Appeals  for  the  third  circuit  has 
said  that:  "If,  instead  of  an  extract,  the  whole  opinion  be 
read,  in  connection  with  the  authorities  which  are  cited  in 
it,  it  may  be  readily  perceived  that  the  substance  of  the 
doctrine  intended  to  be  affirmed,  is  that  a  combination,  to 
be  patentable,  must  produce  a  new  and  useful  result  as 
the  product  of  the  combination,  and  not  a  mere  aggregate 
of  several  results,  each  the  complete  result  of  one  of  the 
combined  elements."  And  that:  "If  it  were  essential  to 
a  valid  patent  for  any  combination  whatever,  that  the 
mode  of  operation  of  every  element  included  in  the  com- 
bination should  be  changed  by  each  of  the  others,  it  would 
have  been  impossible  to  sustain  several  combination  pat- 
ents which  have  in  fact  been  upheld,  as,  indeed,  it  would 
be  difficult  to  conceive  of  any  mechanical  combination 
which  would  be  both  possible  and  patentable."62 

And  Judge  McKenna  expressly  declined,  when  strenu- 
ously urged  by  counsel  so  to  do,  to  recognize  as  an  estab- 
lished rule  of  law,  that  in  all  cases  where  the  action  of  each 
of  the  combined  devices  remains  its  own  individual  action, 
there  is  no  patentable  combination.63 

And  while  the  language  above  quoted  from  Pickering  v. 
McCullough  has  been  often  quoted  since  it  was  delivered, 

62  National  Cash  Register  Co.  tional  Mausoleum  Co.  v.  Sievert, 
v.  American  Cash  Register  Co.,  213  F.  R.  225,  1914;  Railroad 
53  F.  R.  371,  1892.  Supply  Co.  v.  Hart  Steel  Co.,  222 

63  Bowers  v.  Von  Schmidt,  63  F.  R.  261,  1915;  New  York 
F.  R.  582,  1894;  also,  Pelton  Scaffolding  Co.  v.  Whitney,  224 
Water  Wheel  Co.  v.  Doble,  190  F.  R.  452,  1915;  E.  E.  Johnson 
F.  R.  760, 1911 ;  Krell  Auto  Grand  Co.  v.  Grinnell  Washing  Machine 
Piano  Co.  v.  Story  &  Clark  Co.,  Co.  (citing  many  cases),  231 
207   F.    R.    946,    1913;   Interna-  F.  R.  988,  1916. 


40  [NVENTOON  [CHAP.    [I. 

there  is  no  case  in  which  the  severer  doctrine  of  the  first 
sentence  of  that  language  has  been  applied  to  defeat  any 
patent  or  claim  which  could  have  endured  the  milder  doc- 
trine of  the  second  of  those  sentences,  or  the  milder  doc- 
trine held  in  the  three  last-mentioned  cases.  Indeed,  the 
Supreme  Court  has  shown  its  preference  for  the  milder 
view,  by  substantially  quoting  the  second  sentence  of 
Justice  Matthews,01  while  omitting  the  first  sentence 
from  all  of  its  later  decisions. 

The  law  of  this  subject  is  well  settled,  and  the  dividing 
line  between  combinations  and  aggregations  is  well  estab- 
lished. Every  case  must  fall  on  one  side  or  the  other  of 
that  line,  and  no  case  can  stand  upon  it.  But  the  facts  in 
particular  cases,  which  will  arise  hereafter,  will  often  make 
it  difficult  to  determine  upon  which  side  of  the  line  those 
cases  respectively  belong.65  Such  decisions  may  sometimes 
be  made  by  direct  analysis  without  extensive  comparisons 
with  precedents ;  but  in  other  cases,  reasoning  by  analogy 
from  precedents  may  be  helpful  to  just  decisions,  and 
therefore  the  Supreme  Court  cases,  which  have  not  been 
already  mentioned  as  relevant  to  the  subject,  and  also 
some  others  are  collected  by  name  in  a  note.66 

64  Brinkerhoff  v.  Aloe,  146  U.  S.  1886;  Hendy  v.  Iron  Works,  127 

516,  1892.  U.  S.  375,  1887;  Royer  v.  Roth, 

«5  Standard  Oil  Co.  v.  South-  132  U.  S.  201,  1889;  Fond  Du  Lac 

ern  Pacific  Railroad  Co.,  48  F.  R.  County  v.  May,  137  U.  S.  407, 

110,  1891.  1890;  Union  Edge  Setter  Co.  v. 

°°Tack  Co.  v.  Mfg.  Co.,  109  Keith,    139    U.    S.    539,    1891; 

U.  S.  120,  1883;  Bussey  v.  Mfg.  Adams    v.    Stamping    Co.,    141 

Co.,  110  U.  S.  145,  1883;  Phillips  U.  S.  539,  1891;  Wright  v.  Yueng- 

v.  Detroit,  111  U.  S.  607,  1883;  ling,  155  U.  S.  53,  1894;  Richards 

Stephenson  v.  Railroad  Co.,  114  v.  Elevator  Co.,  158  U.  S.  301, 

U.  S.  158,  1884;  Beecher     Mfg.  1895;  and  159  U.  S.  486,  1895; 

Co.   v.   Atwater   Mfg.   Co.,    114  Office  Specialty  Mfg.  Co.  v.  Fen- 

U.  S.  523,  1884;  Thatcher  Heat-  ton  Metallic  Mfg.  Co.,  174  U.  S. 

ing  Co.  v.  Burtis,  121  U.  S.  293,  492,  1899;  Anton  v.  Grier  Bros. 


CHAP.    II.]  INVENTION  41 

§  33.  The  rule  of  the  last  section  does  not  state  dot 
imply  that  all  the  parts  of  a  patentable  combination  must 
act  at  the  same  time.  The  fact  on  that  point  is  no  crite- 
rion by  means  of  which  to  distinguish  invention  from  aggre- 
gation. Justice  Curtis,  in  a  Circuit  Court  case,67  stated 
the  true  doctrine  on  this  subject,  and  stated  it  with  marked 
lucidity,  saying:  "To  make  a  valid  claim  for  a  combina- 
tion, it  is  not  necessary  that  the  several  elementary  parts 
of  the  combination  should  act  simultaneously.  If  those 
elementary  parts  are  so  arranged  that  the  successive 
action  of  each  contributes  to  produce  some  one  practical 
result,  which  result,  when  attained,  is  the  product  of  the 
simultaneous  or  successive  action  of  all  the  elementary 
parts,  viewed  as  one  entire  whole,  a  valid  claim  for  thus 
combining  those  elementary  parts  may  be  made."  And 
that  view  of  the  law  has  also  been  taken  in  more  recent 
times.68  Nor  is  it  necessary  that  all  the  parts  of  a  machine 
combination  should  co-operate  all  the  time.  "It  is  enough 
that,  in  the  normal  and  progressive  use  of  the  machine, 
they  do  so  some  of  the  time."69 

§  34.  It  is  not  invention  to  duplicate  one  or  more  of  the 
parts  of  a  machine  or  a  manufacture;  unless  the  duplica- 
tion causes  a  new  mode  of  operation,  or  produces  a  new 
unitary  result. 

Co.,  185  F.R.  796, 1911;  Gould  &  mestic  Tel.  Co.,  42  F.  R.  226, 

Eberhardt   v.    Cincinnati   Shafer  1890;  San  Francisco  Bridge  Co.  v. 

Co.,  194  F.  R.  680, 1912;  Sheffield  Keating,  68  F.  R.  353,  1895;  E.  J. 

Car  Co.  v.  D'Arcy,  194  F.  R.  686,  Manville  Mach.  Co.  v.  Excelsior 

1912;  Houser  v.  Starr,  203  F.  R.  Needle  Co.,  167  F.  R.  538,  1909; 

264,  1913;    H.    J.    Heinz   Co.   v.  Novelty  Glass  Mfg.  Co.  v.  Brook- 

Cohn,  207  F.  R.  547,  1913;  Ball  v.  field,  170  F.  R.  946,  1909. 

Coker,  210  F.  R.  278,  1913.  69  Sanders    ».     Hancock,     128 

87  Forbush  v.  Cook,  2  Fisher,  F.  R.  424,  1904;  National  Tube 

669,  1857.  Co.   v.   Aiken,    163    F.    R,    254, 

68  Holmes  Alarm  Tel.  Co.  v.  Do-  1908. 


42  ENVENTION  [CHAP.    II. 

Ill  Dunbar  v.  Myers  "  (lie  patent  was  based  on  a  circular 
sawmill  adapted  t<>  sawing  Lumber  into  thin  sheets  to  be 
used  for  the  backs  of  picture-frames  and  mirrors.  It  dif- 
fered from  former  machines  used  for  I  lie  same  purpose, 
mainly  in  the  fact  that  it  had  a  plate  on  each  side  of  the 
saw  for  the  purpose  of  expanding  the  saw  kerf  and  thus 
keeping  the  sawed  parts  away  from  the  sides  of  the  saw, 
whereas  earlier  machines  had  such  a  plate  only  on  one 
side  of  the  saw.  The  two  plates  of  the  patented  machine 
differed  from  each  other  in  diameter  and  in  one  or  two 
other  respects,  but  the  function  performed  by  each  of 
them  was  substantially  identical  with  that  performed 
by  the  other.  The  Supreme  Court  therefore  held  the  claim 
which  covered  the  additional  plate  to  be  void  for  want 
of  invention. 

In  Slawson  v.  Grand  Street  R.  R.  Co.71  the  patented  im- 
provement consisted  merely  in  putting  an  additional  pane 
of  glass  in  the  fare-box  of  a  street  car,  on  the  side  next  to 
the  passengers,  so  that  they  could  see  into  the  box,  as  well 
as  the  driver,  for  whose  use  one  pane  of  glass  was  already 
in  the  side  of  the  box  next  to  him.  The  Supreme  Court 
said  that  the  putting  in  of  that  additional  pane  of 
glass  required  no  more  invention  than  the  putting  of 
an  additional  window  in  a  room  opposite  one  already 
there. 

Millner  v.  Voss 72  was  decided  by  Judge  Bond  in  Virginia. 
The  patent  involved,  purported  to  cover  an  arrangement 
of  furnaces  and  flues  in  a  tobacco-curing  house.  It  ap- 
peared to  differ  from  prior  arrangements  only  in  the  fact 
that  each  of  the  furnaces  had  two  or  more  fire-places  of 

70  Dunbar  v.  Myers,  94  U.  S.  72  Millner  v.  Voss,  4  Hughes, 
197,  1876.  262,  1882. 

71  Slawson  v.  Grand  Street  R.  R. 
Co.,  107  U.  S.  653,  1882. 


CHAP.    II.]  INVENTION  fit 

different  sizes  on  each  side  of  a  chimney,  whereas  former 
arrangements  had  but  one.  Judge  Bond  wittily  said 
that,  "Where  one  stove  is  found  to  be  unequal  to  the 
heating  of  a  room,  to  put  another  beside  it,  even  though 
smaller,  requires  no  invention."  Mr.  Millner's  patent 
was  therefore  held  to  be  void. 

And  the  rule  of  this  section  has  been  applied  in  cases  not 
so  simple  as  those  above  mentioned ; n  and  may  be  applied 
still  more  widely  hereafter. 

The  first  exception  which  belongs  to  the  general  rule  of 
this  section,  is  illustrated  by  the  Parker  water-wheel.  Be- 
fore the  date  of  that  invention,  it  was  customary  to  place  a 
single  turbine,  upon  a  vertical  shaft,  in  such  a  way  that  the 
pressure  of  the  water  was  partly  exerted  endwise  of  the 
shaft;  and  that  pressure,  in  addition  to  the  weight  of  the 
shaft,  and  of  the  wheel,  had  to  be  sustained  by  the  bearing 
of  the  shaft.  Parker  placed  two  such  wheels  in  a  pair, 
face  to  face,  on  the  same  shaft,  and  the  water  entered  be- 
tween them,  so  that  the  downward  pressure  of  the  water 
upon  one  wheel  was  balanced  by  the  upward  pressure  of 
the  water  upon  the  other  wheel.  In  this  case  the  duplica- 
tion of  the  wheel  caused  a  new  mode  of  operation ;  and  the 
patent  was  held  to  be  valid.74 

The  second  exception  which  belongs  to  the  general  rule 
of  this  section,  is  illustrated  by  the  Goss  printing-press. 
The  distinguishing  characteristic  of  that  press,  consists 
in  mounting  one  prior  "straight-run"  web-perfecting 
printing-press,  on  top  of  another  like  press,  so  that  the 
two  printed  webs  can  be  brought  flatwise  together,  with- 
out any  edgewise  movement  of  either.    Thus  a  new  uni- 

73  Electrical  Accumulator  Co.  v.  Yaryan  Mfg.  Co.,  43  F.  R.  149, 
Julien  Electric  Co.,  38  F.  R.  138,      1890. 

1889;    Sugar   Apparatus    Co.    v.         74  Parker  v.  Hulme,   1  Fisher, 

44,  1849. 


44  [nvbntion  [chap.  tt. 

tary  result  was  obtained;  and  the  patent  on  the  duplex 
press,  was  held  to  l>e  valid.7'' 

§  35.  It  is  not  invention  to  omit  one  or  more  of  the  parts 
of  a  machine  or  manufacture,  unless  that  omission  causes  a 
new  mode  of  operation  of  the  parts  retained. 

Stow  v.  Chicago,76  decided  by  Judge  Blodgett,  is  the 
case  which  perhaps  most  exactly  corresponds  with  this 
rule.  The  patent  in  that  case  covered  a  wood  pavement 
like  that  of  Nicholson,  except  that  it  omitted  the  board 
foundation  and  also  the  board  strips  of  that  earlier  pave- 
ment. Judge  Blodgett  held  that  those  omissions  consti- 
tuted no  invention,  saying:  "A  reconstruction  of  a  ma- 
chine, so  that  a  less  number  of  parts  will  perform  all  the 
functions  of  the  greater,  may  be  invention  of  a  high 
order,  but  the  omission  of  a  part,  with  a  corresponding 
omission  of  function,  so  that  the  retained  parts  do  just 
what  they  did  before  in  the  combination,  cannot  be 
other  than  a  mere  matter  of  judgment,  depending  upon 
whether  it  is  desirable  to  have  the  machine  do  all,  or  less, 
than  it  did  before."  These  views  were  also  reiterated 
and  reinforced  by  the  same  judge  many  years  after  they 
were  stated  and  applied  by  him  in  the  leading  case.77 

And  the  Supreme  Court,  when  the  latter  case  reached 
that  tribunal,  affirmed  Judge  Blodgett's  decision;78  and 
has  since  rendered  several  decisions  to  the  same  effect. 79 

75  Goss  Printing-Press  Co.  v.  Tool  Co.  v.  Davenport,  134  F.  R. 
Scott,  108  F.  R.  260,  1901.  869,  1905. 

76  Stow  v.  Chicago,  3  Bann.  &  78  McClain  v.  Ortmayer,  141 
Ard.  92,  1877.  U.  S.  425,  1891. 

77  McClain  v.  Ortmayer,  33  79  Hat  Pouncing  Machine  Co. 
F.  R.  287,  1888;  see  Brown  v.  v.  Hedden,  148  U.  S.  489,  1893; 
Huntington  Piano  Co.,  134  F.  R.  Giles  v.  Heysinger,  150  U.  S.  632, 
735,  1904,  where  omission  of  1893;  Olin  v.  Timken,  155  U.  S. 
parts  was  held  to  constitute  in-  148,  1894;  Richards  v.  Chase 
vention;  also  J.  Stevens  Arms  &  Elevator  Co.,  159  U.  S.  477,  1895. 


CHAP.    II.]  INVENTION  45 

The  exception  which  is  stated  in  the  general  rule  of  this 
section  was  judicially  applied,  and  is  well  illustrated,  in  a 
case  decided  by  Judge  Nathaniel  Shipman,  where  inven- 
tion was  found  to  reside  in  so  reorganizing  a  meat-mincing 
machine,  as  to  dispense  with  some  of  its  parts,  and  as  to 
cause  the  parts  retained  to  do  the  work  of  the  original 
machine.80 

And  the  same  exception  is  illustrated  in  a  later  case,  in 
the  Circuit  Court  of  Appeals  for  the  second  circuit.81  And 
in  a  case  which  involved  a  process  patent,  the  Supreme 
Court  has  decided  that  invention  resided  in  omitting  one 
of  the  steps  in  an  old  process,  where  the  resulting  new  proc- 
ess was  the  result  of  careful  and  long-continued  experi- 
ment, and  where  its  utility  was  decidedly  greater  than  that 
of  the  old  process.82  And  Judge  Gilbert  has  held  that  it 
is  invention  to  omit,  from  a  prior  process,  a  step  which 
those  skilled  in  its  performance  considered  essential,  but 
which  the  inventor  proved  to  be  useless.83  It  is  not  in- 
vention, however,  merely  to  make  in  one  piece  what  was 
formerly  made  in  two.84 

§  36.  It  is  not  invention  to  change  a  process,  machine, 
manufacture  or  composition  of  matter,  by  substituting  an 
equivalent  for  either  of  its  parts;  unless  the  new  part,  not 

80  Enterprise  Mfg.  Co.  v.  Sar-  84  General  Electric  Co.  v.  Yost 
gent,  28  F.  R.  187,  1886;  Dunn  Electric  &  Mfg.  Co.,  139  F.  R. 
Mfg.  Co.  v.  Standard  Computing  568,  1905;  Sheffield  Car  Co.  v. 
Scale  Co.,  163  F.  R.  521,  1908.  D'Arcy,    194   F.    R.   686,    1912; 

81  Consolidated  Store  Service  Milwaukee  Co.  v.  Avery,  209 
Co.  v.  Siegel-Cooper  Co.,  107  F.  R.  616,  1913;  Enterprise  Mfg. 
F.  R.  716,  1901;  Dececo  Co.  v.  Co.  v.  Wm.  Shakespear  Co.,  220 
Gilchrist  Co.,  125  F.  R.  293,  1903.  F.    R.    304,    1915;    Pedersen    r. 

82Lawther    v.    Hamilton,    124  Dundon,   220  F.   R.  309,   1915; 

U.  S.  1,  1887.  Stuber    v.    Central    Brass    and 

83  Pacific    Contracting    Co.    v.  Stamping   Co.,    224   F.    R.    712, 

Bingham,  62  F.  R.  283,  1894.  1915. 


lli  l\\  KNTION  [CHAP.    II. 

only  performs  the  function  of  the  part  for  which  it  whs 
substituted,  but  also  performs  another  function,  by  an- 
other mode  of  operation.85 

What  is  signified  in  the  patent  law  by  the  word  "equiva- 
lent" is  explained  in  detail  in  the  chapter  on  infringement. 
The  subject  is  of  double  importance,  because  it  relates 
sometimes  to  the  validity  and  sometimes  to  the  infringe- 
ment of  patents.  A.  B.  may  contrive  and  may  patent  a 
process,  machine,  manufacture,  or  composition  of  matter, 
which  differs  from  the  prior  patented  invention  of  C.  D. 
in  one  part  only.  If  the  courts  decide  that  the  new  part 
inserted,  is  an  equivalent  of  the  old  part  omitted,  then  the 
contrivance  of  A.  B.  will  be  an  infringement;  and  it  will 
not  be  an  invention,  save  in  the  exceptional  case  stated 
in  the  rule.  If,  on  the  other  hand,  the  courts  hold  that 
the  part  inserted  is  not  an  equivalent  of  the  old  part 
omitted,  then  the  machine  of  A.  B.  may  be  an  invention, 
and  it  will  not  be  an  infringement  of  any  claim  covering 
the  entire  machine  of  C.  D. 

§  37.  It  is  not  invention  to  combine  old  devices  into  a 
new  machine  or  manufacture 86  or  design,87  without  pro- 
ducing any  new  mode  of  operation. 

85  Smith  v.  Nichols,  21  Wallace,  Ajax  Metal  Co.  v.  Brady  Brass 

119,  1874;  Crouch  v.  Roemer,  103  Co.,  155  F.  R.  409,  1907. 

U.    S.    797,    1880;    Cochrane    v.  88  Burt  v.  Evory,  133  U.  S.  349, 

Waterman,  1  McArthur's  Patent  1890;  Florsheim  v.  Schilling,  137 

Cases,  54,  1844;  In  re  Hebbard,  1  U.  8.  77,  1890;  Morgan  Envelope 

McArthur's   Patent   Cases,   550,  Co.  v.  Albany  Paper  Co.,  40  F.  R. 

1857;  Perry  v.  Foundry  Co.,  12  582,    1889;   Mahon  v.   McGuire 

F.  R.  436,  1882;  Celluloid  Mfg.  Mfg.  Co.,  51  F.  R.  684,  1892. 

Co.  v.  Tower,  26  F.  R.  451,  1885;  See  Section  26. 

Tiemann  v.  Kraatz,  85  F.  R.  440,  87  General      Gaslight      Co.     v. 

1898;  Grimes  v.  Allen,  102  F.  R.  Matchless  Mfg.  Co.,  129  F.-R. 

615,  1900;  Westinghouse  Electric  137,  1904;  Graff,  Washbourne  & 

&    Mfg.    Co.    v.    New    England  Dunn  v.  Webster,  195  F.  R.  522, 

Granite  Co.,  103  F.  R.  967,  1900;  1912. 


CHAP.    II.]  INVENTION  47 

This  rule  differs  from  that  of  Section  32  in  not  depend- 
ing upon  absence  of  joint  mode  of  operation,  but  only  upon 
antiquity  of  mode  of  operation.  For  this  reason,  while 
the  invalidity  of  a  patent,  under  the  rule  of  Section  32,  can 
be  shown,  where  it  exists,  from  the  face  of  the  patent ;  the 
invalidity  of  a  patent  under  the  rule  of  this  section  requires 
outside  evidence  for  its  establishment,  and  depends  upon 
the  state  of  the  prior  art  for  its  applicability.88  The  mean- 
ing and  scope  of  this  rule,  like  all  the  primary  rules  of  this 
chapter,  require  illustration  and  example  for  full  compre- 
hension; and  such  examples  and  illustrations  are  abun- 
dantly supplied  by  the  adjudicated  cases. 

Stimpson  v.  Woodman  89  involved  a  patent  for  a  machine 
for  pebbling  leather.  It  gave  the  leather  the  pebbled  sur- 
face by  means  of  a  roller,  which  had  the  counterpart  of  that 
surface  engraved  or  sunk  on  its  periphery.  The  same  kind 
of  roller  had  previously  been  used  for  the  same  purpose 
by  hand,  and  the  same  kind  of  machine  had  been  used  for 
compressing  leather,  except  that  the  roller  in  it  was 
smooth.  The  Supreme  Court  held  that  the  change  in- 
volved in  putting  the  old  figured  hand  roller  in  the  place 
of  the  plain  roller  of  the  machine,  involved  no  inven- 
tion, and  that  the  patent  was  void,  if  the  facts  were  as 
stated. 

Heald  v.  Rice 90  was  based  on  a  patent  which  covered  a 
certain  previously  known  straw-feeding  attachment  in 
combination  with  a  certain  previously  known  return-flue 
boiler,  that  straw-feeding  attachment  having  been  pre- 
viously combined  with  a  fire-box  boiler.  The  utility  of 
the  return-flue  boiler  in  that  combination  was  much  greater 

88  Brickill  v.  Hartford,  57  F.  R.  9°  Heald  v.  Rice,  104  U.  S.  754, 
217,  1893.                                              1881. 

89  Stimpson    v.    Woodman,    10 
Wallace,  117,  1869. 


48  l\\  ENTION  [CHAP.    II. 

than  that  of  the  fire-box  boiler,  but  the  Supreme  Court 
nevertheless  held  thai  there  was  no  invention  in  the  union 
of  the  former  with  the  straw-feeding  attachment. 

Hall  v.  Macneale91  shows  the  following  state  of  facts. 
The  patentee  first  made  safe  doors,  the  plates  of  which 
were  held  together  by  cored  conical  arbors,  having  screw 
threads  cut  on  their  exterior  surfaces,  and  later  he  made 
other  safe  doors,  the  plates  of  wrhich  were  held  together  by 
solid  conical  arbors  which  had  no  such  screw  threads  as 
the  cored  conical  arbors  had,  and  he  afterward  ob- 
tained a  patent  for  the  combination  of  the  plates  of 
safe  doors  with  solid  conical  arbors  having  such  screw 
threads.  The  Supreme  Court,  speaking  by  Justice 
Blatchford,  said  that  "  There  was  no  invention  in  add- 
ing to  the  solid  conical  bolt  the  screw  thread  of  the  cored 
conical  bolt." 

Many  Circuit  Court  cases  also  involve  the  doctrine  of 
this  section.  In  one  such  case 92  Justice  Blatchford  held 
a  patent  to  be  void  for  want  of  invention,  which  covered  a 
combination  of  a  wrhip  socket  having  an  annular  recess  in 
it,  with  a  flexible  elastic  ring  held  in  that  recess  by  its  own 
elasticity,  and  provided  on  its  inner  edge  with  non- 
contiguous projections,  separated  so  that  they  could  not 
be  pressed  into  contact  with  each  other  by  the  insertion 
of  the  whip  handle  into  the  ring.  That  decision  was  based 
on  the  fact  that  a  prior  whip  socket  having  an  annular 
recess,  had  been  combined  with  a  plain  rubber  ring  in  that 
recess,  and  on  the  further  fact  that  flexible  elastic  rings 
constructed  like  those  of  the  patent  had  been  combined 
with  a  whip  socket  which  had  no  annular  recess,  but  which 
clamped  that  ring  between  the  upper  end  of  that  socket 
and  a  cap  above  it.    Judge  John  Lowell  likewise  decided 

91  Hall  v.  Macneale,  107  U.  S.  92  Searls  v.  Merriara,  22  0.  G. 

90,  1882.  1040,  1882. 


CHAP.    II. J  INVENTION  49 

three  similar  cases.  In  one  of  them  93  he  held  it  to  be  no 
invention  to  give  paper  collars  the  same  kind  of  surface 
that  had  theretofore  been  impressed  upon  other  articles 
of  paper.  In  another  94  he  decided  that  embossed  lines  on 
writing  paper  being  old,  and  ogee  lines  on  other  paper 
being  old,  there  was  no  invention  in  embossing  ogee  linos 
on  writing  paper  to  serve  as  guides  to  the  eye  of  the  writer. 
In  a  third  case 9:i  he  held  that  soft  base-balls  having  been 
covered  with  a  double  cover,  and  hard  base-balls  having 
been  covered  with  a  single  cover,  there  was  no  invention 
in  covering  a  hard  base-ball  with  a  double  cover.  And 
other  still  later  cases  illustrate  the  same  doctrine.96 

But  while  a  new  combination  with  an  old  mode  of  opera- 
tion is  not  invention,  an  old  combination  with  a  new  mode 
of  operation  may  be  an  invention.  The  Supreme  Court 
found  that  the  Henry  Adams  corn  sheller  was  an  invention, 
and  was  patentable  to  him,  although  his  father,  Augustus 
Adams,  had  previously  made  corn  shellers  from  which  that 
of  Henry  differed  only  in  reversing  the  direction  of  revolu- 
tion of  one  of  its  parts.  That  part  was  the  revolving 
beater,  which  Augustus  Adams  made  to  turn  in  the  direc- 

91  Union  Paper  Collar  Co.   v.  Co.,  33  F.  R.  273,  1888;  Low  v. 

Leland,    1   Bann.    &    Ard.   491,  Stove  Co.,  36  F.  R.  903,  1888; 

1874.  Rodebaugh  v.  Jackson,  37  F.  R. 

94  Cone  v.  Morgan  Envelope  886,  1889;  Royer  v.  Coupe,  38 
Co.,  4  Bann.  &  Ard.  109,  1879.  F.  R.  115,  1889;  Royer  v.  Belting 

95  Mahn  v.  Harwood,  3  Bann.  &  Co.,  40  R.  F.  160,  1889;  Gates 
Ard.  517,  1878.  Iron  Works  v.  Fraser,  42  F.  R.  49, 

96  Yale  Lock  Mfg.  Co.  v.  Na-  1890;  Abbott  Machine  Co.  v. 
tional  Bank,  17  F.  R.  533,  1883;  Bonn,  51  F.  R.  223,  1892;  Hunt 
Kaaps  v.  Hartung,  23  F.  R.  187,  v.  Garsed,  51  F.  R.  678,  1892; 
1885;  Troy  Machinery  Co.  v.  Electric  Ry.  Co.  v.  Jamaica  R.  R. 
Bunnell,  27  F.  R.  810,  1886;  Co.,  61  F.  R.  655,  1894;  National 
Union  Edge  Setter  Co.  v.  Keith,  Harrow  Co.  v.  Westcott,  84  F.  R. 
31  F.  R.  46,  1887;  Washburn  &  671,  1898;  Kursheedt  Mfg.  Co.  v. 
Moen  Mfg.  Co.  v.  Barbed  Wire  Nadav,  103  F.  IJ.  948,  1900. 


50  i\\  i.\  rio.N  [chap.  ii. 

tion  opposite  to  the  desired  motion  of  the  ears  of  corn, 
expecting  it  to  knock  back  any  ear  that  might  ride  upon 
another,  and  thus  tend  to  prevent  choking  the  shelling 
devices.  This  mode  of  operation  was  not  successful,  and 
Henry  Adams  reversed  the  revolution  of  the  beater  so 
that  its  wings  moved  in  the  same  direction  as  that  of  the 
ears  of  corn,  and  thus  drove  them  forward  into  the  shelling 
devices.  The  old  combination,  with  that  new  mode  of 
operation,  was  entirely  successful,  and  the  patent  thereon 
was  therefore  held  to  be  valid.97 

A  new  combination,  with  a  new  mode  of  operation,  may 
be  invention;  even  if  all  the  parts  thereof  are  old,  and  even 
if  the  function  of  the  combination,  is  also  old.98  As  ap- 
plied to  designs  a  design  patent  may  involve  invention 
even  though  it  is  made  up  of  features  which  are  separately 
found  in  prior  patents  and  articles  of  the  same  class.99 
There  are  several  cases  which  contain  dicta  contrary  to 
this  rule;  but  those  dicta  must  have  resulted  from  incom- 
plete thinking.  In  each  of  many  arts,  many  patents 
have  been  granted,  on  a  corresponding  number  of  new 
combinations  of  old  parts,  for  performing  precisely  the 
same  function.  The  earlier  of  those  combinations  may 
be  useful;  but  not  useful  enough,  because  not  rapid  enough. 

97  Keystone  Mfg.  Co.  v.  Adams,  Co.  v.  Johns-Pratt  Co.,  204  F.  R. 
151  U.  S.  142,  1894.  288,   1913;  Proudfit  Loose  Leaf 

98  Deere  &  Co.  v.  Rock  Island      Co.    v.    Kalamazoo    Loose    Leaf 


Plow  Co.,  84  F.  R.  176,  1898 
Hale  &  Kilburn  Co.  v.  Oneonta 
etc.,  Ry.  Co.,  124  F.  R.  514,  1903 


Western   Electric   Co.   v.   North      1911 


Electric  Co.,  135  F.  R.  79,  1905 
Buchanan  v.  Perkins  Electric 
etc.,  Co.,  135  F.  R.  90,  1905 
Lavigne  Mfg.  Co.  v.  John  F 
McCanna   Co.,    194   F.    R.    112 


Binder  Co.,  230  F.  R.  120,  1915; 
Diamond  Rubber  Co.  v.  Consoli- 
dated Tire  Co.,  220  U.  S.  428, 


99  Bush  &  Lane  Piano  Co.  v. 
Becker  Bros.,  209  F.  R.  233, 1913; 
Ashley  v.  Weeks-Numan  Co., 
220  F.  R.  899,  1915;  Grelle  v. 
City  of  Eugene,  221  F.   R.  68, 


1911;    E.    H.    Freeman    Electric      1915. 


CHAP.    II. J 


[NVENTION 


51 


To  deny  the  quality  of  invention,  to  all  the  later,  different, 
and  far  superior  combinations  for  doing  the  same  thing, 
would  be  unreasonable,  and  unjust,  and  plainly  contrary 
to  Section  4886  of  the  Revised  Statutes. 

The  same  principles  apply  to  process  patents  and  a 
process  consisting  of  a  number  of  steps  may  be  valid 
even  though  each  of  the  steps  was  old.100 

§  38.  It  is  not  invention  to  use  an  old  process,101  ma- 
chine,102 manufacture, 10:!  composition  of  matter,104  or 
design,105  for  a  new  and  analogous  purpose. 


100  Victor  Talking  Machine  Co. 
v.  American  Graphophone  Co., 
189  F.  R.  359,  1911. 

101  King  v.  Gallun,  109  U.  S. 
99,  1883;  Miller  v.  Foree,  116 
U.  S.  27,  1885;  Dreyfus  v.  Searle, 
124  U.  S.  63, 1887;  Crescent  Brew- 
ing Co.  v.  Gottfried,  128  U.  S. 
169,  1888;  Marchand  v.  Emken, 
132  U.  S.  195,  1889;  Lovell  Mfg. 
Co.  v.  Gary,  147  U.  S.  637,  1893; 
De  Lamar  v.  De  Lamar  Mining 
Co.,  110  F.  R.  53S,  1901;  Farrell 
v.  Boston  &  M.  Copper  &  Silver 
Mining  Co.,  121  F.  R.  841,  1903; 
Baker  v.  F.  A.  Duncombe  Mfg. 
Co.,  146  F.  R.  744,  1906. 

102  Pennsylvania  Railroad  Co. 
v.  Truck  Co.,  110  U.  S.  494,  1883; 
Blake  v.  San  Francisco,  113  U.  S. 
679,  1884;  Hendy  v.  Iron  Works, 
127  U.  S.  375,  1888;  Aron  v. 
Railway  Co.,  132  U.  S.  84,  1889; 
Howe  Machine  Co.  v.  Needle 
Co.,  134  U.  S.  397,  1890;  Fond 
Du  Lac  County  v.  May,  137 
U.  S.  406,  1890;  Bussell  Trimmer 
Co.   v.  Stevens,   137  U.   S.  433, 


1890;  Wollensak  u.  Sargent,  151 
U.  S.  227,  1894;  Gates  Iron  Works 
v.  Fraser,  153  U.  S.  347,  1894; 
Mast  Foos  &  Co.  v.  Stover  Mfg. 
Co.,  177  U.  S.  485,  1900;  Lettelier 
v.  Mann,  91  F.  R.  914,  1899; 
American  Well  Works  v.  F.  C. 
Austin  Mfg.  Co.,  98  F.  R.  994, 
1900. 

103  Peters  v.  Active  Mfg.  Co., 
129  U.  S.  530,  1889;  Peters  v. 
Hanson,  129  U.  S.  541,  1889;  St. 
Germain  v.  Brunswick,  135  U.  S. 
230,  1890;  Patent  Clothing  Co. 
v.  Glover,  141  U.  S.  563,  1891; 
Ansonia  Co.  v.  Electrical  Supply 
Co.,  144  U.  S.  18,  1892;  Neptune 
Meter  Co.  v.  National  Meter 
Co.,  127  F.  R.  563,  1904;  Morton 
Trust  Co.  v.  American  Car  & 
Foundry  Co.,  169  F.  R.  109, 1909; 
Lewis  Construction  Co.  v.  Semple, 
177  F.  R.  407,  1910. 

104  Browning  v.  Colorado  Tele- 
phone Co.,  61  F.  R.  845,  1894. 

lu5  Smith  v.  Saddle  Co.,  148 
U.  S.  679,  1893;  Cahoone  Barnet 
Mfg.  Co.  v.  Rubber  &  Celluloid 


52  INVENTION  [CHAP.    II. 

Iii  Tucker  v.  Spalding  m  the  patent  covered  a  combina- 
tion of  a  circular  disk  with  removable  saw  teeth.  There 
was  a  prior  combination  of  a  circular  disk  with  removable 
cutters  for  the  purpose  of  cutting  tongues  and  grooves. 
The  Supreme  Court  held  that  if  what  the  latter  combi- 
nation did,  was  in  its  nature  the  same  as  sawing,  and  if 
its  structure  and  its  action  suggested  to  the  mind  of  the  or- 
dinarily skillful  mechanic  this  double  use  to  which  it  could 
be  adapted  without  material  change,  then  the  combination 
of  the  patent  was  but  a  double  use  of  the  older  combination, 
and  was  therefore  not  an  invention,  and  not  patentable. 

Brown  v.  Piper107  is  a  case  in  which  the  Supreme  Court 
held  that  a  patent  for  an  apparatus  for  preserving  fish  and 
other  articles  in  a  close  chamber  by  means  of  a  freezing 
mixture  having  no  contact  with  the  atmosphere  of  the 
preserving  chamber,  covered  nothing  but  a  double  use  of 
the  well  known  ice-cream  freezer. 

In  Roberts  v.  Ryer  108  the  same  tribunal  decided  that  to 
change  the  form  and  proportions  of  the  compartments  of  a 
refrigerator,  so  as  to  utilize  the  descending  instead  of  the 
ascending  current  of  endlessly  circulating  air,  was  but  a 
double  use  of  that  refrigerator. 

More  than  forty  other  cases  also  embody  the  rule  of 
this  section,  and  apply  it  to  particular  new  uses  of  old  in- 
ventions.108" 

Harness  Co.,  45  F.  R.  582,  1891;  Morse  &  Co.,  194  F.  R.  971, 1912; 

Bevin  Bros.    Mfg.    Co.   v.   Starr  Mallon  v.  Gregg  &  Co.,  137  F.  R. 

Bros.  Bell  Co.,   114  F.  R.  362,  68,   1908  (containing  very  clear 

1902;  Phcenix  Knitting  Works  v.  statement  of  the  principle). 

Hygienic  Fleeced  Underwear  Co.,  107  Brown  v.  Piper,  91  U.  S.  37, 

194  F.  R.  703,  1911.  1875. 

108  Tucker  v.  Spalding,  13  Wal-  108  Roberts  v.  Ryer,  91  U.  S.  157, 

lace,  543,  1871;  Conley  v.  King  1875. 

Bridge  Co.,  175  F.  R.  79,  1909;  iwta  Bean  v.  Smallwood,  2  Story, 

F.  E.  Myers  &  Bro.  v.  Fairbanks,  408,  1843;  Meyer  v.  Pritchard,  1 


CHAP.    II. J 


INTENTION 


53 


§  39.  It  may  be  invention,  to  use  an  old  process,  ma- 
chine, manufacture,  composition  of  matter,  or  design,  for 


Bann.  &  Ard.  261,  1874;  Adams  v. 
Loft,  4  Bann.  &  Ard.  496,  1879; 
Royer  v.  Mfg.  Co.,  20  F.  R. 
853,  1884;  Howe  Machine  Co.  v. 
Needle  Co.,  21  F.  R.  630,  1884; 
Spill  v.  Celluloid  Mfg.  Co.,  21 
F.  R.  639,  1884;  Celluloid  Mfg. 
Co.  v.  Noyes,  25  F.  R.  319,  1885; 
Aaron  v.  Manhattan  Ry.  Co.,  26 
F.  R.  317,  1S86;  Marchand  v. 
Emken,  26  F.  R.  629,  1886; 
Shenfield  v.  Mfg.  Co.,  27  F.  R, 
808,  1886;  Gloucester  Isinglass  & 
Glue  Co.  v.  Le  Page,  30  F.  R. 
370,  1887;  Ansonia  Brass  &  Cop- 
per Co.  v.  Electrical  Supply  Co., 
32  F.  R.  81,  1887;  Acme  Hay 
Harvesting  Co.  v.  Martin,  33  F.  R. 
249,  1888;  Mann's  Car  Co.  v. 
Monarch  Car  Co.,  34  F.  R.  130, 
1888;  Babcock  &  Wilcox  Co.  v. 
Pioneer  Iron  Works,  34  F.  R.  338, 
1888;  Rubber  Harness  Trimming 
Co.  v.  Rubber  Comb  Co.,  35  F.  R. 
498,  1888;  Hale  &  Kilbourn  Mfg. 
Co.  v.  Hartford  Mattress  Co., 
36  F.  R.  762,  1888;  Schmid  v. 
Mfg.  Co.,  37  F.  R.  345,  1889; 
Foster  v.  Crossin,  44  F.  R.  62, 
1890;  American  Road  Machine 
Co.  v.  Pennock  &  Sharp  Co.,  45 
F.  R.  255,  1890;  Watson  v. 
Stevens,  47  F.  R.  117, 1891;  Whit- 
comb  v.  Coal  Co.,  47  F.  R.  660, 
1891;  Zinsser  v.  Krueger,  48  F.  R. 
298,  1891;  Buckingham  v.  Iron 
Co.,  51  F.  R.  236,  1892;  Steiner 


Extinguisher  Co.  v.  A.Irian,  52 
F.  R.  733,  1892;  Steiner  Extin- 
guisher Co.  r.  Adrian,  .">!)  F.  R. 
132,  1893;  Forgie  v.  (Ml-WeU 
Supply  Co.,  57  F.  K.  747,  1893; 
Consolidated  Bunging  Apparatus 
Co.  v.  Brewing  Co.,  60  F.  R.  93, 
1894;  Adams  Electric  Ry.  Co.  v. 
Lindell  Ry.  Co.,  63  F.  R.  990, 
1894;  Thomson-Houston  Elec- 
tric Co.  v.  Western  Electric  Co., 

70  F.  R.  96,  1895;  Rose  v.  Hirsh, 

71  F.  R.  881,  1896;  Schreiber  & 
Sons  Co.  v.  Grimm,  72  F.  R.  671, 
1896;  Dunbar  v.  Eastern  Elevat- 
ing Co.,  81  F.  R.  201,  1897; 
Palmer  v.  John  E.  Brown  Mfg. 
Co.,  84  F.  R.  454,  1897;  Frederick 
R.  Stearns  Co.  v.  Russell,  85  F.  R. 
230,  1898;  Capital  Sheet  Metal 
Co.  v.  Kinnear  &  Gager  Co.,  87 
F.  R.  333,  1898;  Edison  Electric 
Light  Co.  v.  E.  G.  Bernard  Co., 
88  F.  R.  276, 1898;  Solvay  Process 
Co.  v.  Michigan  Alkali  Co.,  90 
F.  R.  818,  1898;  Briggs  v.  Duell, 
93  F.  R.  974,  1899;  Thomson- 
Houston  Electric  Co.  v.  Rahway 

E.  L.  &  P.  Co.,  95  F.  R.  660, 1899; 
Indiana  Novelty  Mfg.  Co.  v. 
Crocker  Chair  Co.,  103  F.  R.  496, 
1900;  Standard  Caster  &  Wheel 
Co.   v.   Caster   Socket   Co.,    113 

F.  R.  162,  1901;  Johnson  Co.  v. 
Toledo  Traction  Co.,  119  F.  R. 
892,  1903;  Antisdel  r.  Bent,  122 
F.  R.  811,  1903;  Bettendorf  Pat- 


54 


INVENTION 


[chap.  II. 


a   new   and   non-analogous   purpose.10*     The   question 

whether  a  particular  new  use  is  analogous,  or  is  non- 
analogous,  to  some  old  use  of  the  same  process  or  thing, 
is  a  question,  the  answer  to  which  depends  on  the  particu- 
lar facts  of  the  case  in  which  it  arises.109  The  decision  of 
such  a  case  can  be  readied  by  comparing  the  facts  thereof, 
with  the  facts  of  some  of  the  cases  wherein  the  new  uses 
were  held  to  be  analogous,  and  also  with  the  facts  of  some 
of  the  cases,  in  which  the  new  uses  were  held  to  be  non- 
analogous,  to  the  old  uses  of  the  same  processes  of  things. 
The  first  of  those  classes  of  cases  have  already  been  cited, ' 10 
and  the  second  class  are  cited  now.111    Where  a  new  use  of 


ents  Co.  v.  J.  R.  Little  Metal 
Wheel  Co.,  123  F.  R.  433,  1903; 
Wm.  B.  Mershon  &  Co.  v.  Bay 
City  Box  &  Lumber  Co.,  189 
F.  R.  741, 1910;  O'Brien-Worthen 
Co.  v.  Steffel,  209  F.  R.  847,  1913. 

10*6  Potts  v.  Creager,  155  U.  S. 
608,  1895;  Cash  Register  Co.  v. 
Cash  Indicator  Co.,  156  U.  S. 
502,  515,  1895;  Hale  &  Kilburn 
Mfg.  Co.  v.  Oneonta,  etc.,  Ry., 
124  F.  R.  514,  1903. 

io9  Briggs  v.  Duell,  93  F.  R.  974, 
1899;  Herman  v.  Youngstown 
Car  Mfg.  Co.,  191  F.  R.  579, 1911. 

110  Section  38. 

111  Potts  v.  Creager,  155  U.  S. 
608,  1895;  Cash  Register  Co.  v. 
Cash  Indicator  Co.,  156  U.  S. 
515,  1895;  Rapid  Service  Store 
Ry.  Co.  v.  Taylor,  43  F.  R.  253, 
1887;  Mack  v.  Optical  Mfg.  Co., 
52  F.  R.  821,  1892;  Brown  Mfg. 
Co.  v.  Mast,  53  F.  R.  585,  1892; 
Loewer  v.  Ford,  55  F.  R.  62,  1893; 


New  Departure  Bell  Co.  v.  Bevin 
Mfg.  Co.,  64  F.  R.  863, 1894;  Col- 
lins v.  Gleason,  68  F.  R.  915, 1895; 
Thomson-Houston  Electric  Co. 
v.  Elmira  &  Horseheads  Ry.  Co., 
69  F.  R.  264,  1895;  American 
Pneumatic  Tool  Co.  v.  Fisher, 
69  F.  R.  332,  1895;  Hillbom  v. 
Hale  &  Kilburn  Mfg.  Co.,  69 
F.  R.  963, 1895;  Taws  v.  Laughlins 
&  Co.,  70  F.  R.  107,  1895;  Amer- 
ican Sulphite  Pulp  Co.  v.  Howland 
Falls  Pulp  Co.,  70  F.  R.  991, 
1895;  Tannage  Patent  Co.  v. 
Zahn,  70  F.  R.  1004,  1895; 
Thomson-Houston  Electric  Co.  v. 
Winchester  Ave.  Ry.  Co.,  71 
F.  R.  195,  1895;  Brownson  v. 
Dodson-Fisher-Brockmann  Co., 
71  F.  R.  517, 1895;  A.  B.  Dick  Co. 
v.  Wichehnan,  74  F.  R.  799,  1895; 
Consolidated  Car  Heating  Co.  v. 
American  Electric  Heating  Corp., 
82  F.  R.  997,  1897;  Electric 
Smelting  &  Aluminum  Co.  v.  Car- 


CHAP.    II. 


INVENTION 


55 


an  old  thing  consists  in  combining  it  with  other  things  in  a 
new  organization,  invention  may  be  present  in  the  com- 
bination, though  absent  from  the  separate  parts.112 

§  40.  Want  of  invention,  if  it  really  exists  in  a  particular 
process  or  thing,  can  nearly  always  be  detected  by  one  or 
another  of  the  foregoing  rules.  When  a  case  arises  to 
which  neither  of  them  applies,  and  relevant  to  which  the 
mind  remains  in  uncertainty,  that  uncertainty  may  be 
removed  by  means  of  the  rule  in  Smith  v.  The  Dental 
Vulcanite  Co.113  namely:    When  the  other  facts  in  the 

liff  v.  Topliff,  145  U.  S.  164,  1892; 
Hat  Pouncing  Machine  Co.  v. 
Hedden,  148  U.  S.  489, 1893;  Kre- 
mentz  v.  Cottle  Co.,  148  U.  S. 


borundum  Co.,  102  F.  R.  631, 
1900;  National  Hollow  Brake- 
Beam  Co.  v.  Interchangeable 
Brake-Beam  Co.,  106  F.  R.  702, 
1901;  Diamond  Drill  &  Machine 
Co.  v.  Kelly  Bros.,  120  F.  R.  292, 
1903;  Forsythe  v.  Garlock,  142 
F.  R.  461,  1905;  General  Electric 
Co.  v.  Bullock  Electric  Mfg.  Co., 
152  F.  R.  427,  1907;  National 
Tube  Co.  v.  Aiken,  163  F.  R.  254, 
1908;  Wayne  Mfg.  Co.  v.  Benbow- 
Brammer  Mfg.  Co.,  168  F.  R. 
271,  1909;  Ramsay  v.  Lynn,  187 
F.  R.  218,  1909;  H.  J.  Heinz  Co. 
v.  Cohn,  207  F.  R.  547,  1913. 

112  Telephone  Cases,  126  U.  S. 
572,  1887. 

113  Smith  v.  Dental  Vulcanite 
Co.,  93  U.  S.  495,  1876;  Hollister 
v.  Benedict  Mfg.  Co.,  113  U.  S.  72, 
1884;  Adams  v.  Stamping  Co.,  141 
U.  S.  542, 1891;  Magowan  v.  Belt- 
ing Co.,  141  U.  S.  343,  1891; 
Gandy  v.  Belting  Co.,  143  U.  S. 
594,  1892;  Barb  Wire  Patent,  143 
U.  S.  284,  1892;  Sessions  v.  Ro- 
madka,  145  U.  S.  44,  1892;  Top- 


560,  1893;  Duer  v.  Lock  Co.,  149 
U.  S.  223,  1893;  Keystone  Mfg. 
Co.  v.  Adams,  151  U.  S.  143, 1894; 
Olin  v.  Timken,  155  U.  S.  155, 
1894;  Potts  v.  Creager,  155  U.  S. 
609,  1895;  Canda  v.  Michigan 
Malleable  Iron  Co.,  124  F.  R.  486, 
1903;  Julius  King  Optical  Co.  v. 
Billhoeffer,  124  F.  R.  521,  1903; 
Brookfield  v.  Novelty  Glass  Co., 

124  F.  R.  551,  1903;  Dececo  Co. 
v.  Gilchrist  Co.,  125  F.  R.  293, 
1903;  Union  Biscuit  Co.  v.  Peters, 

125  F.  R.  601,  1903;  Farmers' 
Mfg.  Co.  v.  Spruks  Mfg.  Co.,  127 
F.  R.  691,  1904;  Warren  Feather- 
bone  Co.  v.  American  Feather- 
bone  Co.,  133  F.  R.  304,  1904; 
Milner  Seating  Co.  v.  Yesbera, 
133  F.  R.  916, 1904;  Comptograph 
Co.  v.  Mechanical  Accountant 
Co.,  145  F.  R.  331,  1903;  Voight- 
man  v.  Weiss  &  Ridge  Cornice  Co., 
148  F.  R.  848,  1903;  Am.  Caramel 


56 


[NVENTION 


[CHAP.    II. 


case  leave  the  question  of  invention  in  doubt,  but  only 
then,"1  the  laet  that  a  process  or  machine,  or  other  sub- 
jecl  of  ;i  patent,  has  gone  into  general  use,  and  has  dis- 
placed other  processes  or  things  which  had  previously 

been  employed  for  analogous  uses,  is  sufficient  to  turn  the 
scale  in  favor  of  the  existence  of  invention.  The  same 
rule  holds  in  case  of  a  design  patent.114" 

In  fact  it  has  been  announced  as  a  rule  of  law  in  the 
ninth  circuit  that  it  is  proper  to  charge  a  jury  that  the 
fact  that  a  device  has  gone  into  general  use  and  has  sup- 
planted other  devices  used  for  a  similar  purpose  is  sufficient 
evidence  of  invention  in  the  absence  of  evidence  to  show 
Co.  v.  Thomas  Mills  &  Bio.,  14!)      Motor   Car   Co.   v.   Austin,   225 


F.  R.  743,  1906;  Consolidated 
Rubber  Tire  ( !o.  v.  Firestone  T.  & 

R.  Co.,  151  F.  R.  237,  1907;  Wag- 
ner Typewriter  Co.  v.  Wyckoff, 
Seamans  &  Benedict,  151  F.  R. 
585,  1907;  Am.  Graphophone 
Co.  v.  Universal  Talking  Machine 
Co.,  151  F.  R.  595,  1907;  St.  Louis 
Street,  etc.,  Co.  v.  Am.  Street, 
etc.,  Co.,  156  F.  R.  574,  1907; 
O'Rourke  Engineering  Construc- 
tion Co.  v.  M'Mullen,  160  F.  R. 
933,  190S;  Morton  v.  Llewellyn, 
164  F.  R.  693,  1908;  Electric 
Controller,  etc.,  Co.  v.  Westing- 
house  Electric,  etc.,  Co.,  171 
F.  R.  83,  1909;  Poole  Bros.  v. 
Isaac  H.  Blanchard  Co.,  204  F.  R. 
285,  1913;  Stebler  r.  Riverside 
Heights  Orange  Growers  Asso- 
ciation, 205  F.  R.  735,  1913; 
Barry  v.  Harpoon  Castor  Mfg. 
Co.,  "209  F.  R.  207,  1913;  Rail- 
road Supply  Co.  v.  Hart  Steel 
Co.,  222  F.  R.  261,  1915;  Cadillac 


F.  R.  983,  1915;  Computing 
Scale  Co.  v.  Automatic  Scale  Co., 
204  F.  R.  609,  1907;  Diamond 
Rubber  Co.  v.  Consolidated  Tire 
Co.,  220  U.S.  428,  1911. 

See  Section  26. 

114  Boss  Mfg.  Co.  v.  Thomas, 
182  F.  R.  811,  1910;  Republic- 
Rubber  Co.  v.  G.  &  J.  Tire  Co.; 
212  F.  R.  170,  1914;  Hyde  v. 
Minerals  Separation,  Ltd.,  214 
F.  R.  100,  1914;  Jackson  Skirt  & 
Novelty  Co.  v.  Rosenbaum,  225 
F.  R.  531,  1915;  Keene  v.  New 
Idea  Spreader  Co.,  231  F.^R.  701, 
1916;  Apple  v.  American  Shoe 
Machinery  &  Tool  Co.,  232  F.  R. 
603,  1916. 

114a  Scofield  v.  Brown,  158  F.  R. 
305,  1907;  Charles  Boldt  Co.  v. 
Nivison-Weiskoff  Co.,  194  F.  R. 
871,  1912;  Theodore  W.  Foster  & 
Bros.  Co.  v.  Tilden  Thurber  Co., 
200  F.  R.  54,  1912. 


CHAP.    II.] 


INVENTION 


57 


that  the  success  was  due  to  any  other  cause  than  that  of 
the  merits  of  the  device.11'' 

Conversely  the  fact  that,  although  a  large  market  has 
been  created,  the  patent  has  had  no  commercial  succi 
in  its  field  is  entitled  to  weight  on  the  question  of  inven- 
tion.116 But  the  fact  that  a  machine  or  other  article  has 
been  forced  into  extensive  sale,  by  judicious  advertising 
and  business  energy,117  or  by  reason  of  the  fact  that  it 
is  made  more  cheaply  than  before,118  or  the  fact  that  the 
patented  invention  constitutes  only  a  part  of  the  complete 
device,119  will  usually  be  sufficient  to  offset  the  showing 
made  by  the  extensive  use.  Another  strong  circumstance 
to  establish  the  quality  of  invention  is  the  fact  that  the 
patentee  has  succeeded  after  others  seeking  the  same  result 
have  failed.1'-0  And  a  closely  analogous  circumstance  to 
prove  invention  is  public  acquiescence  in  the  inventor's 

115  Sherman-Clay     &     Co.     v.      Tool  Co.,  232  F.  R.  603,  1916; 
Searchlight  Horn  Co.,  214  F.  R,      Johnson  v.  Lambert,  234  F.   R. 


86,  1914. 

116  Ideal  Stopper  Co.  v.  Crown 
Cork  &  Seal  Co.,  131  F.  R.  244, 
1904;  Fielding  v.  Crouse-Hinds 
Electric  Co.,  148  F.  R.  230,  1906; 
Adt  v.  Bay  State  Optical  Co., 
226  F.  R.  925,  1915. 

n7McClain  v.  Ortmayer,  141 
U.  S.  427,  1891;  Fox  v.  Perkins, 
52  F.  R.  213,  1892;  Billings  & 
Spencer  Co.  v.  Van  Wagoner  & 
Williams  Hardware  Co.,  98  F.  R. 
732,  1899;  StiUwell  v.  McPherson, 
207  F.  R.  837,  1913. 

See  Diamond  Rubber  Co.  v. 
Consolidated  Tire  Co.,  220  U.  S. 
428,  1911;  Epstein  v.  Dryfoos, 
229  F.  R.  756,  1914;  Apple  v. 
American     Shoe     Machinery     & 


886,  1916. 

118  General  Electric  Co.  v.  Yost 
Electric  Mfg.  Co.,  131  F.  R.  874, 
1904;  Heekin  Co.  v.  Baker,  138 
F.  R.  63,  1905;  Robins  Convey- 
ing Belt  Co.  v.  American  Road 
Machine  Co.,  145  F.  R.  923,  1906. 

119  De  Mayo  Coaling  Co.  v. 
Michener  Stowage  Co.,  231  F.  R. 
736,  1916. 

120Boyer  v.  Keller  Tool  Co., 
127  F.  R.  130,  1904;  Albright  v. 
Langfeld,  131  F.  R.  473,  1904; 
Kotten  v.  Knight,  137  F.  R.  597, 
1905;  American  Caramel  Co.  r. 
Mills  &  Bro.,  149  F.  R.  743,  1906: 
Amer.  Graphophone  Co.  v.  Uni- 
versal Talking  Machine  Co.,  151 
F.  R.  595,  1907;  Hall  Signal  Co. 


58  INN  BNTION  [CH  \l>.    II. 

rights  over  an  extended  period  of  t  iiiit*. '-1  The  same  prin- 
ciples apply  to  design  patents.122 

§41.  To  change  t  he  form  of  a  machine  or  manufacture 
is  sometimes  invention,  and  sometimes  it  is  not  invention. 
Where  a  change  of  form  is  within  the  domain  of  mere  con- 
struction, it  is  not  invention;  l22°  but  where  it  involves  a 
change  of  mode  of  operation,  or  of  function,  or  of  result, 
it  is  invention,  unless  it  is  held  to  be  otherwise  in  pursu- 
ance of  some  rule  other  than  any  that  relates  to  form.1'--'' 

§  41a.  To  change  the  proportions  of  a  machine  or  man- 
ufacture wrill  seldom,  or  never  amount  to  invention;  but  it 
may  be  invention  to  change  the  proportions  of  the  ingre- 
dients of  a  chemical  combination,  or  other  composition  of 
matter.  For  example,  Charles  Goodyear  invented  soft 
vulcanized  rubber,  consisting  of  crude  India  rubber  and 
sulphur  in  the  proportion  of  one  part  of  sulphur  to  five 
parts  of  rubber,  mixed  and  subjected  to  a  high  degree  of 
heat;  and  afterward  Nelson  Goodyear  invented  hard 
vulcanized  rubber,  consisting  of  equal,  or  comparatively 

v.   General  Railway  Signal  Co.,  vnb  Winans    v.    Denmead,    15 

169   F.    R.    290,    1909;    Novelty  Howard,    341,     1853;    Davis    v. 

Glass  Mfg.  Co.  v.  Brookfield,  170  Palmer,     2    Brock,    310,     1827; 

F.  R.  946,  1909;  New  York  Scaf-  Mabie  v.   Haskell,   2  Cliff.   510, 

folding  Co.  v.  Whitney,  224  F.  R.  1865;  Aiken  v.  Dolan,  3  Fisher, 

452,  1915;  Expanded  Metal  Co.  204,   1867;  United  States  Bung 

v.  Bradford,  214  U.  S.  366,  1909.  Mfg.   Co.   v.   Independent  Bung 

121Keasby  &  Mattison  Co.  v.  Co.,  31  F.  R.  76,  1887;  Electrical 

Philip  Carey  Mfg.  Co.,  139  F.  R.  Accumulator  Co.  v.  Julien  Elec- 

571,  1905;  Mahony  v.  Malcolm,  trie   Co.,   38   F.    R.    143,    1889; 

143  F.  R.  124,  1905.  Parker  v.  Dickinson,  38  F.  R.  413, 

122  Scofield  v.  Browne,  158  F.  R.  1889;  Hammond  Buckle  Co.  v. 

305,  1907.  Goodyear  Rubber  Co.,  58  F.  R. 

122a  J.  J.  Warner  Co.  v.  Rosen-  413,  1893;  Goldie  v.  Iron  Co.,  64 

blatt,  80  F.   R.  542,   1897;  Na-  F.  R.  237,  1894;  Diamond  State 

tional  Harrow  Co.  v.  Wescott,  84  Iron  Co.  v.  Goldie,  84  F.  R.  975, 

F.  R.  670,  1898.  1898. 


CHAP.   II.  |  [NVENTION  59 

equal,  parts  of  sulphur  and  crude  rubber  mixed  and  sub- 
jected to  a  high  degree  of  heat.  In  this  case,  the  change 
in  proportion  of  the  two  materials  resulted  in  two  entirely 
distinct  articles,  having  entirely  distinct  modes  of  opera- 
tion and  functions;  and  the  later  article  was  well  held  to 
be  an  invention.123 

§  42.  A  question  of  invention  is  a  question  of  fact  and 
not  of  law;124  though  it  is  to  be  determined  by  means  of 
the  rules  of  law  set  forth  in  this  chapter.  In  applying 
those  rules,  patents  are  not  held  void  for  want  of  invention 
except  where  invention  is  clearly  absent.125  And  inven- 
tion is  not  clearly  absent  from  the  subject  of  a  patent, 
however  simple,126  unless  that  subject  was  logically  de- 
ducible  from  the  prior  art.127 

§  43.  Every  inventor  or  constructor  is  presumed  by  the 
law  to  have  borrowed  from  another,  whatever  he  produces 
that  was  actually  first  invented  and  constructed  or  used 
by  that  other,  in  the  United  States; 128  or  was  previously 
patented  129  or  described  in  a  printed  publication  130  in 

i23  Goodyear  v.  Vulcanite  Co.,  2  Steel  Co.,  206  F.  R.  666,  1913; 

Fisher,  312,  1856.  Expanded   Metal   Co.    v.    Brad- 

124  Poppenhusen    v.    Fakke,    5  ford,  214  U.  S.  366,  1909. 

Blatch.  49,  1862;  Shuter  v.  Davis,  See  Section  26. 

16  F.  R.  564,  1883;  Keene  v.  New  127  Williams  v.  American  String 

Idea  Spreader  Co.,  231  F.  R.  701,  Wrapper  Co.,  86  F.  R.  641,  1898 

1916.  128  Mast,  Foos  &  Co.  v.  Stover 

See  Section  23.  Mfg.  Co.,  177  U.  S.  493,  1900 

125Reiter».  Jones,  35  F.R.  421,  Crompton  v.  Knowles,  7  F.   R 

1888;    Marvin    v.    Gotshall,    36  203,    1881;   Williams   v.   Rubber 

F.  R.  908,  1888;  Hunt  Bros.  Fruit  Shoe  Co.,  54  F.  R.  499,   1893 

Packing  Co.  v.  Cassidy,  53  F.  R.  Allen  v.   Steele,   64  F.   R.   795, 

260,  1892.  1894. 

126  Weber  Electric  Co.  v.  Na-  129  Duer  v.  Lock  Co.,  149  U.  S. 

tional  Gas  &  Electric  Co.,  204  223,  1893. 

F.  R.  79,  1913;  Ferro  Concrete  13°  French  v.  Carter,  137  U.  S. 

Construction    Co.    v.    Concrete  239,  1890. 


60  INVENTION  [CHAP.    II. 

any  country,  after  having  been  invented  by  another. 
But  a  mere  application  for  a  patent  is  not  a  part  of  the 
prior  art,  since  an  application  is  confidential  and  the 
public  cannot  be  informed  of  its  contents  until  a  patent 
issues  upon  it.131  It  follows  that  such  of  the  foregoing 
rules  as  involve  an  inquiry  into  the  state  of  the  art  to 
which  the  thing  or  process  in  controversy  pertains,  may 
involve  an  inquiry  into  the  date  and  the  character  of  in- 
ventions which  were  in  fact  unknown  to  the  patentee, 
when  he  produced  that  thing  or  process.  Where  those 
prior  inventions  are  proved  by  prior  patents,  those  patents 
are  the  record  evidence  of  those  parts  of  the  prior  art 
which  they  present.  The  rights  under  the  later  patent 
are  subject  to  what  this  record  evidence  actually  shows. 
To  change  this  record,  by  making  theoretical  modifica- 
tions of  these  earlier  patents,  would  be  the  same  in  prin- 
ciple, as  to  change  by  interpolation  or  modification,  any 
other  evidence  between  the  parties.132 

§  44.  It  was  shown  in  Section  23  that  patents  are  grant- 
able  for  nothing  but  inventions.  It  is  also  the  law  that 
they  can  be  granted  only  to  those  who  invented  the  in- 
ventions they  respectively  cover,  or  to  the  assignees  or 
legal  representatives  of  those  persons.133  The  subjects 
of  assignments  and  devolutions  of  inventions  and  patents 
are  explained  in  the  chapter  on  title;  but  this  is  the  proper 
place  in  which  to  treat  the  subjects  of  joint  invention  and 
sole  invention. 

131  Sundh  Electric  Co.  v.  Inter-  Machine    Co.,   229   F.    R.    168, 

borough  Rapid  Transit  Co.,  198  1914. 

F.  R.  94, 1912;  Vacuum  Engineer-  132  Western     Electric     Co.     v. 

ing  Co.  v.  Dunn,  209  F.  R.  219,  Home  Tel.  Co.,  85  F.  R.  656, 1898. 

1913;  Patents  Selling  &  Export-  133  Kennedy   v.   Hazelton,    128 

ing    Co.    v.    Dunn,    213    F.    R.  U.  S.  672,  1888;  Eager  v.  United 

40,  1914;  Mergenthaler  Linotype  States,  35  Court  of  Claims,  567, 

Co.  v.  International  Typesetting  1900. 


CHAP.    II.]  INVENTION  61 

§  45.  If  A.  B.  notices  the  need  of  a  new  machine  to  per- 
form a  particular  function,  and  thereupon  conceives  the 
plan  of  such  a  machine,  and  proceeds  to  embody  that  plan 
in  a  successful  working  structure,  and  does  all  this  with- 
out assistance  from  any  other  person,  then  it  is  clear 
that  he  is  a  sole  inventor  of  that  machine.  If,  on  the 
other  hand,  C.  D.  notices  the  need  of  a  new  machine 
to  perform  a  particular  function,  and  calls  the  attention 
of  E.  F.  to  the  matter,  and  a  successful  invention  is, 
after  many  conversations  between  the  two,  embodied  in 
a  working  machine  constructed  by  the  hands  of  both, 
then  it  may  be  that  C.  D.  is  the  sole  inventor,  or  it 
may  be  that  E.  F.  is  the  sole  inventor,  or  it  may  be 
that  both  are  joint  inventors  of  the  machine  they 
produce. 

§  46.  Every  machine,  before  it  can  be  used,  must  be  con- 
structed as  well  as  invented.  If  one  man  does  all  the  in- 
venting and  another  does  all  the  constructing,  the  first  is 
the  sole  inventor.  But  where  two  or  more  persons  exer- 
cised their  inventive  faculties  in  the  mutual  production 
of  a  new  and  useful  process,  machine,  manufacture,  com- 
position of  matter,  or  design,  those  persons  are  joint 
inventors  thereof,  regardless  of  whether  one,  or  part,  or 
all,  or  neither  of  those  persons  constructed  or  helped  to 
construct  the  first  specimen  of  that  thing,  or  performed  or 
helped  to  perform  the  first  instance  of  that  process.  And 
the  fact  that  one  of  two  joint  inventors  conceived  the  best 
thought  that  went  into  the  invention  does  not  invalidate 
the  patent  issued  to  them  jointly,  where  the  claim  covers 
a  series  of  steps  or  a  number  of  elements  in  a  combina- 
tion.134 Nor  is  a  patent  to  joint  inventors  invalidated  by 
the  fact  that  one  of  them  only  first  perceived  the  crude 
form  of  the  elements  and  the  possibility  of  their  adapta- 
134  Quincy  Mining  Co.  v.  Krause,  151  F.  R.  1012,  1907. 


62  iw  i.m'iox  [chap.  ii. 

lion  to  accomplish  the  result  desired.186  In  fact  the  con- 
ception of  the  entire  device  may  be  due  to  one,  but  if  the 
other  makes  suggestions  of  practical  value  which  assist 
in  working  out  the  main  idea  and  making  it  opera- 
tive, or  contributes  an  independent  part  of  the  entire 
invention  whicli  helps  to  create  the  whole,  he  is  a  joint 
inventor  even  though  his  contribution  be  of  minor  impor- 
tance.136 But  if  the  contribution  is  the  subject  of  a 
separate  claim  in  the  patent  such  person  is  not  a  joint 
inventor.137 

§  47.  The  case  of  the  Agawam  Co.  v.  Jordan138  is  not  in- 
consistent with  what  is  advanced  at  the  close  of  the  last 
section.  The  defendant  in  that  case  did  not  set  up  a 
joint  invention  by  the  patentee  and  another,  but  set  up  an 
alleged  sole  invention  by  that  other  of  the  thing  patented. 
The  most  that  it  could  get  its  witness  to  testify,  however, 
was  that  he  suggested  to  the  patentee  one  of  the  parts  of 
one  of  the  combinations  secured  by  the  patent,  but  that 
the  patentee  himself  contrived  the  devices  by  means  of 
which  that  part  was  incorporated  into  that  combination. 
The  patentee  did  not  claim  the  suggested  part  as  his 
invention,  but  only  claimed  several  new  combinations  of 
old  devices,  and  among  the  number,  a  combination  of 
several  things,  one  of  which  was  said  to  have  been  sug- 
gested by  the  defendant's  witness.  In  that  state  of  facts 
it  was  clear  that  the  latter  was  neither  sole  nor  joint  in- 
ventor of  anything  covered  by  the  patent,  and  accord- 

135  Vrooman  v.  Penhallow,  179  137  De  Laski  &  Thropp  C.  W.  T. 

F.  R.  296,  1910.  Co.  v.  Wm.  R.  Thropp  &  Sons 

»»  De  Laski  &  Thropp  C.  W.  T.  Co.,  218  F.  R.  458,  1914. 

Co.  v.  Wm.  R.  Thropp  &  Sons  138  Agawam   Co.   v.   Jordan,   7 

Co.,  218  F.  R.  458,  1914;  Wm.  R,  Wallace,    583,    1868.      See    also 

Thropp  &  Sons  Co.  v.  De  Laski  &  Lloyd  v.  Antisdel,  95  0.  G.  1646, 

Thropp,  etc.,  Co.,  226  F.  R.  941,  1901. 
1915. 


CHAP.    II. J  INVENTION  liij 

ingly  the  Supreme  Court  so  decided.  Other  authority 
to  the  same  effect  is  found  in  the  note.139 

And  the  case  of  Forgie  v.  Oil  Well  Supply  Co.1"1  is  also 
consistent  with  the  views  of  the  last  section.  In  that  case 
Forgie  wanted  a  machine  by  means  of  which  to  exert  great 
power  horizontally,  and  it  occurred  to  him  that  a  lifting 
jack  might  be  somehow  used  for  the  purpose.  With  this 
view  he  called  on  Barrett,  who  was  the  inventor  and  manu- 
facturer of  a  particularly  good  lifting  jack,  and  presented 
his  case  to  him.  Barrett  thereupon  caused  his  lifting  jack 
to  be  reconstructed  on  a  plan  prescribed  by  himself,  and 
thereafter  made  a  number  of  the  reconstructed  tools  for 
Forgie,  who  sold  them  to  others  who,  like  himself,  wanted 
such  a  machine.  They  filled  the  vacant  place  by  entirely 
successful  operation,  and  became  very  popular.  There- 
upon Forgie  applied  for  and  obtained  a  patent  on  the 
reconstructed  machine  as  his  own  invention;  but  the  Cir- 
cuit Court  of  Appeals  for  the  third  circuit  held  the  patent 
to  be  void,  because  the  machine  had  been  produced  by 
Barrett,  and  not  by  Forgie. 

§  48.  In  order  to  make  an  invention  of  importance,  a 
considerable  fund  of  general  knowledge  must  be  possessed 
by  the  inventor.  Wriere  that  fund  was  acquired  before  he 
undertook  his  invention,  it  is  easy  to  see  that  those  who 
imparted  it,  are  not  thereby  made  joint  inventors  with 
him.  Though  not  quite  so  obvious,  it  is  equally  certain 
that  if,  pending  his  experiments,  an  inventor  seeks  and 
secures  one  point  of  information  from  a  scientist,  and 
another  from  a  machinist,  and  a  third  from  a  book,  he  is 
not,  on  account  of  having  done  the  first  two,  any  less  a 

139  Novelty  Glass  Mfg.  Co.  v.  140  Forgie  v.   Oil  Well   Supply 

Brookfield,  170  F.  R.  946,  1909;  Co.,  58  F.  R.  871,  1893.    See  also 

Cheshire  v.  Cox  Multi-Mailer  Co.,  Upson  Nut  Co.  v.  H.  Chapin  Sons 

229  F.  R.  415,  1915.  Co.,  117  F.  R.  320,  1902. 


6  I  INVENTION  [CHAP.   II. 

sole  inventor  than  he  is  on  account  of  having  done  the 
hist.1" 

§  49.  To  constitute  a  man  an  inventor,  it  is  not  neces- 
sary for  him  to  have  skill  enough  to  embody  his  invention 
in  a  working  machine,  or  in  a  model,  or  even  in  a  drawing. 
If  a  man  furnishes  all  the  ideas  needed  to  produce  the  in- 
vention aimed  at,  he  may  avail  himself  of  the  mechanical 
skill  of  others,  to  practically  embody  or  represent  his 
contrivance,  and  still  be  the  sole  inventor  thereof.112  But 
it  is  not  invention  to  conceive  a  result,  and  then  employ 
another  to  produce  that  result.11' 

§  50.  Under  the  statute,  only  he  or  they  who  have  in- 
vented a  particular  process  or  thing  can  lawfully  receive 
a  patent  therefor,  except  in  a  case  where  the  patentee  is 
an  assignee  or  legal  representative  of  the  true  inventor  or 
inventors.  The  patent  must  disclose  the  real  inventor, 
and  must  be  founded  on  his  right  as  such.  It  follows 
that  if  one  of  two  or  more  persons  obtains  a  patent  for 
a  process  or  thing  which  was  jointly  invented  by  them 
all,  that  patent  is  not  valid.144  In  such  a  case  it  is  not 
true  that  the  patentee  invented  the  thing  patented.  He 
only  helped  to  invent  it.  If  he  could  have  a  valid  pat- 
ent for  that  thing  or  process,  each  of  his  co-inventors 
could  do  likewise,  and  each  of  several  persons  would  pos- 
sess the  exclusive  right  to  the  same.  As  to  each  other, 
such  a  state  of  affairs  among  patentees  would  be  impos- 
sible, and  as  to  the  public  it  would  be  intolerable. 

141  O'Reilly  v.  Morse,  15  How-  143  Streat  v.  White,  35  F.   R. 

ard,  62,  1853.  426,  1888. 

142Sparkman    v.     Higgins,     1  144  Arnold    v.    Bishop,    1    Mc- 

Blatch.    209,    1846;    Stearns    v.  Arthur's  Patent  Cases,  36,  1841; 

Davis,     1     McArthur's     Patent  H.  T.  Slemmer's  Appeal,  58  Penn. 

Cases,.  696,  1859;  Smith  v.  Stew-  164,  1864;  Newgold  v.  American 

art,  55  F.  R.  483,  1893;  Huebel  v.  Electrical  Novelty  &  Mfg.  Co., 

Barnard,  90  0.  G.  751,  1899.  108  F.  R.  959,  1901. 


CHAP.    II.]  INVENTION  65 

It  has  been  held,  however,  that  where  the  application  for 
such  a  patent  has  been  assigned  prior  to  issuance  of  the 
patent,  the  patent  is  not  invalid  by  reason  of  each  of 
joint  inventorship  on  the  ground  that  the  patent,  having 
been  granted  to  an  assignee,  the  reason  for  the  rule  does 
not  exist.14* 

§  51.  So  also,  if  several  persons  obtained  a  joint  patent 
for  what  was  invented  solely  by  one  of  them,  that  patent 
is  void.146  And  where  several  independent  inventions  are 
claimed  by  several  different  claims  in  a  joint  patent,  and 
where  one  of  those  inventions  was  made  by  one  of  the 
joint  applicants  for  the  patent,  without  any  co-operation 
of  another  joint  applicant,  the  claim  of  the  patent  which 
covers  that  invention,  is  void.147  There  is  no  statutory 
authority  to  grant  a  patent  or  a  claim  to  a  non-inventor 
jointly  with  an  inventor,  without  an  assignment  or  a  death, 
any  more  than  there  is  to  grant  a  patent  to  a  non-inventor 
alone.  But  very  convincing  evidence  is  required  to  es- 
tablish the  invalidity  of  a  patent  on  the  ground  stated 
in  this  section.148 

145  De  Laski  &  Thropp  C,  W.  cent  Gaslight  Co.,  100  F.  R.  650, 

T.  Co.  v.  Wra.  R.  Thropp  &  Sons  1900. 
Co.,  218  F.  R.  458,  1914.  i«  Heulings  v.  Reid,  58  F.  R. 

148  Ransom    v.    New    York,    1  868,  1893;  Welsbach  Light  Co.  v. 

Fisher,   269,    1856;   Hotchkiss  v.  Cosmopolitan  Gaslight  Co.,   104 

Greenwood,  4  McLean,  461,  1848;  F.  R.  86,  1900. 
Barrett  v.   Hall,   1   Mason,   473,  148  Button  Fastener  Co.  v.  Lu- 

1818;  Royer  v.  Coupe,  29  F.  R,  cas,  28  F.  R.  371,  1886;  Schlicht  & 

363,  1886;  Stewart  v.  Tenk,  32  Field  Co.  v.  Machine  Co.,  36  F. 

F.  R.  665,  1887;  Welsbach  Light  R.  585,   1888;  Priestly  v.  Mon- 

Co.   v.   Cosmopolitan    Incandes-  tague,  47  F.  R.  651, 1891. 


CHAPTER  III 


NOVELTY 


52.  Novelty  necessary  to  patent- 

ability. 

53.  Novelty  defined. 

54.  Not     negatived      by      prior 

knowledge  or  use  in  a 
foreign  country. 

55.  Not  negatived  by  any  private 

patent  granted  in  a  foreign 
country. 

56.  Prior  printed  publications. 

57.  Fullness  of  prior  patents  and 

printed  publications. 

58.  Novelty  not  negatived  by  any 

prior  abandoned  applica- 
tion. 

59.  Qualification  of  the  last  rule. 

60.  Successful  prior  applications. 

61.  Novelty  not  negatived  by  any 

unpublished  drawing,  or 
prior  model. 

62.  Novelty    not    negatived    by 

anything  substantially  dif- 
ferent. 

63.  Abandoned  experiments. 

64.  Novelty  in  cases  of  designs. 

65.  Novelty    not    negatived    by 

anything  apparently  simi- 
lar, but  comparatively  use- 
less. 


66.  Novelty  not  negatived  by  an- 
tiquity of  parts. 

Novelty  not  negatived  by 
prior  accidental  and  not 
recognized  production. 

Novelty  not  negatived  by 
anything  neither  designed, 
nor  apparently  adapted, 
nor  actually  used  for  the 
same  purpose. 

Comparative  dates. 

Dates  of  patented  inventions. 

Novelty  is  negatived  by  one 
instance  of  prior  knowledge 
and  use  in  this  country. 

Novelty  is  negatived  by  prior 
existence  and  knowledge  in 
this  country. 

Inventor's  lack  of  knowledge 
of  anticipating  matter  is 
immaterial. 

74.  Old  tiling  derived  from  new 

source,  is  not  novel. 

75.  Questions  of  novelty  are  ques- 

tions of  fact. 

76.  Burden  of  proof  relevant  to 

novelty,  and  want  of  nov- 
elty. 


67 


us 


69 

70 

71 


7 'J 


73 


§  52.  The  statutes  of  the  United  States  have  always 
provided  that  anything  to  be  patentable  must  be  new. 
Statements  that  some  things  are  not  patentable  because, 
66 


CHAP.    III. J  NOVELTY  67 

though  new  in  a  commercial  sense,  they  are  not  new  in  the 
eye  of  the  patent  law,  occur  in  a  few  reported  cases.  In 
every  such  instance,  however,  it  would  have  been  more 
accurate  to  say  that  some  things  are  not  patentable  be- 
cause, though  new  things,  they  are  not  invented  things. 
Such  things  lack  patentability  not  because  they  lack 
newness,  but  because  they  lack  invention.  The  subject 
belongs  to  the  domain  of  invention  and  not  to  that  of 
novelty,  and  it  is  therefore  treated  in  the  second  chapter 
of  this  book.  With  this  explanation,  it  is  not  untrue  nor 
misleading  to  say  that  whatever  is  really  new,  is  new  in 
the  eye  of  the  patent  law.  Therefore  in  order  to  negative 
novelty  or  as  it  is  usually  expressed,  to  "anticipate"  an 
invention,  it  is  necessary  that  all  of  the  elements  of  the 
invention  or  their  equivalents  be  found  in  one  single 
description  or  structure  where  they  do  substantially  the 
same  work  in  substantially  the  same  way.1 

§  53.  Many  things  are  new  in  the  eye  of  the  patent  stat- 
utes, in  addition  to  those  things  which  are  really  new.  The 
word  has  therefore  a  broader  signification  in  those  statutes 
than  it  has  in  the  dictionaries;  but  that  broader  meaning  is 
not  capable  of  a  short  definition.  Novelty  is  the  conven- 
tional name  of  the  statutory  newness,  but  that  name  does 
not  indicate  the  boundaries  of  the  thing  which  it  denotes. 
Those  boundaries  can  be  delineated  only  by  enumerating 
and  explaining  those  classes  of  facts  which  fall  within  them, 
but  which  fall  without  the  boundaries  of  actual  newness; 
those  classes  of  facts  which  negative  newness,  but  which 
do  not  negative  novelty. 

§  54.  Novelty  is  not  negatived  by  prior  knowledge  and 
prior  use  in  a  foreign  country,  of  the  subject  of  a  United 

1  Ottumwa    Box    Car    Loader      lated  Cushion  &  Spring  Co.  v. 
Co.  v.  Christy  Box  Car  Loader      D'Arcy,  232  F.  R.  468,  1916. 
Co.,  215  F.  R.  362,  1914;  Venti- 


68  NOVELTY  [CHAP.    III. 

States  patent;  provided  thai  subject  had  nowhere  been 
patent od  to  another,  and  nowhere  been  described  in  a 
printed  publication  when  it  was  invented  by  the  applicant 
for  that  patent.2 

In  former  editions  of  this  book,  this  rule  was  coupled 
with  the  additional  proviso;  that  the  patentee,  at  the  time 
of  making  his  application  for  a  United  States  patent, 
believed  himself  to  be  the  first  inventor  of  the  thing  cov- 
ered thereby.3  That  proviso  was  based  on  Section  4923 
of  the  Revised  Statutes;  but  it  now  appears  that  that 
section  does  not  attend  to  any  case  in  which  a  person,  at 
the  time  of  making  his  application  for  a  patent,  does  not 
believe  himself  to  be  the  first  inventor  of  the  thing  covered 
thereby.  On  the  contrary,  that  section  leaves  that  class 
of  cases  to  the  operation  of  Section  4886  of  the  Revised 
Statutes.  That  section  prescribes  that  a  patent  may  be 
obtained  by  any  person  who  has  invented  any  subject  of 
a  patent,  not  known  or  used  by  others  in  this  country,  and 
not  patented  or  described  in  any  printed  publication  any- 
where, before  his  invention  thereof;  but  it  does  not  couple 
that  permission  with  the  condition  that  the  patentee, 
at  the  time  of  making  his  application  for  a  patent,  shall 
believe  himself  to  be  the  first  inventor  of  the  thing  covered 
thereby.  Accordingly,  it  has  now  been  held  by  the  Cir- 
cuit Court  of  Appeals  for  the  first  circuit,  that  novelty 
is  not  negatived  by  prior  knowledge  and  use  in  a  foreign 
country,  of  the  subject  of  a  United  States  patent,  where 
that  prior  knowledge  and  use  became  known  to  the  ap- 
plicant for  that  patent,  between  the  time  when  he  made 
his  invention,  and  the  time  when  he  made  his  application, 
and  which  information  prevented  him  from  believing  him- 

2  Revised     Statutes,      Section      trie   Light  Co.,   108  F.  R.  226, 
4886;    Westinghouse    Electric    &      1901. 
Mfg.  Co.  v.  Saranac  Lake  Elec-          3  See  third  edition. 


CHAP.    III.]  NOVELTY  09 

self,  at  the  time  of  making  his  application,  to  be  the  first 
inventor  of  the  invention  covered  thereby.4 

Prior  knowledge,  possessed  in  this  country,  by  some 
other  person  than  the  applicant  for  a  particular  patent, 
that  the  subject  of  that  patent  was  known  and  used  in 
some  foreign  country,  before  its  invention  here,  is  not  such 
knowledge  in  this  country  as  will  negative  the  novelty  of 
the  patent  covering  that  subject.5  And  this  rule  is  not 
altered  by  the  fact  that  one  who  acquired  the  prior  knowl- 
edge of  the  foreign  use  came  to  the  United  States  and  dis- 
closed his  knowledge  to  others  before  the  date  of  invention 
of  the  United  States  applicant,5"  provided  of  course  that 
the  United  States  applicant  did  not  learn  of  the  disclosure 
before  his  date  of  conception.  If  such  were  the  case  he 
would  not,  of  course,  be  an  inventor  of  the  thing  disclosed. 

§  55.  Novelty  is  not  negatived  by  any  United  States 
patent  which  was  issued  after  the  contested  invention 
was  made,  though  applied  for  before  that  event,6  nor  by 
any  prior  private  patent  granted  in  any  foreign  country,7 
nor  by  any  public  patent  granted  in  England,  unless  the 
latter  was  sealed  before  the  person  obtaining  the  Amer- 

4  American  Sulphite  Pulp  Co.  Anderson  v.  Collins,  122  F.  R. 
v.  Howland  Falls  Pulp  Co.,  80  458,  1903;  Eck  r.  Kutz,  132  F.  R. 
F.  R.  398,  1897.  758,  1904  (but  such  a  patent  is 

5  Doyle  v.  Spalding,  19  F.  R.  admissible  on  the  issue  of  priority 
746,  1884.  of  invention,  ib.) ;  Gray  Telephone 

sa  Revised     Statutes,     Section  Pay  Station  Co.  v.  Baird  Mfg. 

4923;  Westinghouse  Machine  Co.  Co.,  174  F.  R.  417,  1909;  Sundh 

v.  General  Electric  Co.,  207  F.  R.  Electric     Co.     v.     Interborough 

75,  1913.    See  Vacuum  Engineer-  Rapid  Transit  Co.,  198  F.  R.  94, 

ing  Co.  v.  Dunn,  209  F.  R.  219,  1912;    Turner    Brass    Works    v. 

1913.  Appliance  Mfg.  Co.,  203  F.  R. 

6  American  Roll  Paper  Co.  v.  1001,  1909;  Vacuum  Engineering 
Weston,  45  F.  R.  689,  1891;  Dia-  Co.  v.  Dunn,  209  F.  R.  219,  1913. 
mond  Drill  &  Machine  Co.  v.  7  Brooks  v.  Norcross,  2  Fisher, 
Kelly  Bros.,  120  F.  R.  287,  1902;  661,  1851. 


70  NOVELTY  |<  II  W.    III. 

ican  patent   made  the  invention.8     In  neither  of  those 

three  cases  can  it  be  truly  said  that  the  invention  was 
antecedently  patented,  and  therefore  such  transactions  do 
not  come  within  the  statute.  A  French  patent  becomes 
effective  to  negative  novelty  as  soon  as  it  is  sealed  and 
enrolled,  and  it  matters  not  for  such  a  purpose  that  it 
was  afterward  permitted  to  lapse  for  non-payment  of  the 
annual  fee,  or  was  never  printed,  or  that  the  device  was 
not  commercially  successful.0  The  date  of  a  German  pat- 
ent for  purposes  of  anticipation  is  the  "ausgegeben"  or 
publication  date.10  But  though  novelty  is  not  negatived 
by  any  United  States  patent,  issued  after  the  contested 
invention  was  made;  novelty  may  be  negatived  by  the 
prior  art,  as  that  art  was  shown  in  the  specification  or  the 
drawing  of  the  application  for  such  a  patent,  if  that  ap- 
plication was  filed  in  the  Patent  Office  before  the  contested 
invention  was  made,11  and  provided  that  there  had  been 
prior  to  the  invention  of  the  patent  in  suit  some  actual 
use  of  the  invention.  For  a  mere  application  in  the  Patent 
Office,  while  it  may  be  sufficient  to  prove  the  date  of  in- 
vention of  a  patent,  cannot  of  itself  be  used  to  anticipate 
another  patent  as  it  is  not  of  itself  a  part  of  the  prior  art.n° 
And  novelty  is  negatived  by  a  full  description,  in  the 
specification  of  a  prior  public  patent,  of  the  subject  cov- 

8  Siemens  v.  Sellers,  123  U.  S.  dered  Milk  Co.  of  America,  222 
283,    1887;   Bliss   v.   Merrill,   33      F.  R.  911,  1915. 

F.  R.  40,  1887;  Electrical  Accu-  "  Millett  v.   Duell,   96  0.   G. 

mulator    Co.    v.    Julieu    Electric  1242,  1901. 

Co.,  38  F.  R.  141,  1889;  American  "  Thomson-Houston    Electric 

Roll   Paper   Co.   v.   Weston,   45  Co.  v.  Ohio  Brass  Co.,   130  F. 

F.  R.  691,  1891.  R.  542,    1904;  Alvord  v.  Smith 

9  Sirocco  Engineering  Co.  v.  &  Watson  Iron  Works,  216  F.  R. 
B.  F.  Sturtevant  Co.,  220  F.  R,  150,  1914;  Sundh  Electric  Co.  v. 
137,  1914.  Interborough  Rapid  Transit  Co., 

10  Merrell-Soule    Co.    v.    Pow-      222  F.  R.  334,  1911. 


CHAP.    III.]  NOVELTY  71 

ered  by  an  American  patent,  even  though  that  subject 
was  not  covered  by  any  of  the  claims  of  the  prior  patent, 
and  therefore  not  patented  to  the  prior  inventor.12  This 
rule  must  result  from  the  fact  that  whatever  is  well  de- 
scribed in  a  public  patent  is  set  forth  to  the  public,  whether 
it  is  claimed  by  the  patentee  or  not.  Indeed  novelty  is 
negatived  by  a  prior  patent  which  shows  the  invention  in 
its  drawings  and  describes  it  in  its  specification,  but  does 
not  even  state  its  use.13 

§  56.  A  printed  publication  is  anything  which  is  printed, 
and,  without  any  injunction  of  secrecy,  is  distributed  to 
any  part  of  the  public  in  any  country;  and  such  a  publica- 
tion may  negative  novelty.14  Indeed,  it  seems  reasonable 
that  no  actual  distribution  need  occur,  but  that  exposure 
of  printed  matter  for  sale  is  enough  to  constitute  a  printed 
publication.  But  the  mere  existence  of  a  printed  thing  is 
not  a  printed  publication,15  though  its  deposit  in  a  public 
library  is.16  A  drawing,  in  a  prior  patent  or  printed  pub- 
lication, if  its  meaning  is  really  undeniable,  may  negative 
novelty  in  a  later  patent  on  a  machine,  manufacture,  or 
design.17 

Inasmuch  as  drawings  can  generally  give  information 
which  is  as  clear  as  that  which  words  alone  can  give,  rele- 
vant to  the  construction  and  character  of  a  machine,  or 
manufacture,  or  design,  there  is  no  reason  for  their  not 
having  the  same  effect  on  the  novelty  of  subsequent  pat- 

12  United  States  Bung  Mfg.  15  Britton  v.  White  Mfg.  Co., 
Co.  v.  Independent  Bung  Co.,  31      61  F.  R.  95,  1894. 

F.  R.  79,  1887;  Saunders  v.  Allen,  16John    Crossley    &    Sons    v. 

60  F.  R.  613, 1894.  Hogg,  83  F.  R.  489,  1897. 

13  Stow  v.  Chicago,  104  U.  S.  17  Millett  v.  DueU,  96  0.  G. 
547,  1881.  1242,    1901;    Britton    v.    White 

"  Rosenwasser  v.  Spieth,  129  Mfg.  Co.,  61  F.  R.  96,  1894; 
U.  S.  47,  1889.  Keene  v.  New  Idea  Spreader  Co., 

231  F.  R.  701,  1916. 


72  NOVELTY  [CHAP.    III. 

ciils.  No  injustice  can  result  from  this  rule;  because  in 
order  to  have  any  effect  on  such  novelty,  drawings  as  well 
as  words,  must  be  able  to  endure  the  test  stated  in  the 
next  section. 

§  57.  Novelty  is  not  negatived  by  any  prior  patent  or 
printed  publication,  unless  the  information  contained 
therein,  is  full  enough  and  precise  enough  to  enable  any 
person  skilled  in  the  art  to  which  it  relates,  to  perform  the 
process  or  make  the  thing  covered  by  the  patent  sought  to 
be  anticipated.18  Testimony  is  not  admissible  to  show 
that  a  prior  patent  or  printed  publication  is  out  of  con- 
formity with  the  intention  of  its  author,19  or  to  explain  an 
otherwise  uniforming  statement  by  evidence  of  some 
apparatus  or  article  not  in  itself  competent  as  an  antici- 
pation.20 Nothing  can  be  used  for  that  purpose  except 
what  is  disclosed  on  the  face  of  the  patents.21  And  expert 
testimony,  though  admissible  on  the  question  of  the 
meaning  of  a  prior  patent  or  publication,  is  not  weighty, 
unless  it  is  supported  by  reasoning;  and  is  not  conclusive 
in  court,  even  if  so  supported.22  A  prior  patent  or  pub- 
lication needs  not  to  have  been  reduced  to  practice,  or  to 
be  more  than  a  paper  proposition,  in  order  to  negative  the 
novelty  of  a  later  patent,23  even  though  the  devices  of  the 

18  Seymour  v.  Osborne,  11  Wal-  19  Badische  Anilin  &  Soda  Fab- 
lace,  516,  1870;  Cawood  Patent,  rik  v.  Kalle,  94  F.  R.  168,  1899; 
94  U.  S.  704,  1876;  Downton  v.  and  104  F.  R.  808,  1900. 
Milling  Co.,  108  U.  S.  466,  1882;  2°  Loew  Filter  Co.  v.  German- 
Eames  v.  Andrews,  122  U.  S.  66,  American  Filter  Co.,  164  F.  R. 
1886;  Carnegie  Steel  Co.  v.  Cam-  855, 1908;  Naylor  v.  Alsop  Process 
bria  Iron  Co.,  89  F.  R.  737,  1898;  Co.,  168  F.  R.  911,  1909. 
Westinghouse  Electric  &  Mfg.  21  Beckwith  v.  Malleable  Iron 
Co.  v.  Saranac  Lake  Electric  Range  Co.,  174  F.  R.  1001, 
Light  Co.,  108  F.  R.  227,  1901;  1910. 

Hess-Bright  Mfg.  Co.  v.  Standard  22  Hanifen  v.  Godshalk  Co.,  84 

Roller-Bearing   Co.,    177    F.    R.  F.  R.  652,  1898. 

435,  1910.  23  E.  M.  Miller  Co.  v.  Meriden 


(HAP.    III.]  NOVELTY  73 

prior  patents  be  incapable  of  successful  operation.  It  is 
sufficient  if  the  prior  patents  embody  the  elements  and 
disclose  the  principle  of  operation  of  the  patent  in  suit.24 
This  doctrine  has  been  applied  to  the  proof  of  anticipation 
by  prior  structures,25  but  its  application  to  such  cases  is 
doubtful. 2r,a  And  a  difference,  which  consists  of  a  mere 
omission  of  something  which  a  skillful  mechanic  would 
supply,  is  not  fatal  to  anticipation.26  The  phrase  "skillful 
mechanic,"  as  used  in  this  connection,  does  not  include 
mechanics  who  are  skillful  only  in  methods  of  servile  imi- 
tation. It  refers  only  to  mechanics  who  know  how  to  vary 
form  without  varying  substance,  and  who,  in  constructing 
a  machine  or  manufacture,  from  a  printed  description,  or 
from  Patent  Office  drawings,  could  readily,  and  would 
freely,  alter  proportions  and  change  details  in  order  to 
adapt  the  contrivance  to  a  particular  use,  or  in  order  to 
secure  greater  merit  of  workmanship  for  the  thing  con- 
structed. 

But  prophetical  suggestions  and  surmises  in  prior  pat- 
ents or  publications,  of  what  results  can  be  achieved  in  a 
particular  art,  are  not  enough  to  negative  the  novelty  of  any 
patent  on  an  invention  which  can  accomplish  that  result. 2fifI 

Bronze  Co.,  80  F.  R.  525,  1897;  25  Merrirnac  Mattress  Mfg.  Co. 

Ideal  Stopper  Co.  v.  Crown  Cork  v.     Feldman,     133     F.     R.    64, 

&  Seal  Co.,  131  F.  R.  244,  1904.  1904. 

See  Timolat  v.  Phila.  Pneumatic  See  Section  67,  post. 

Tool  Co.,  131  F.  R.  257,  1904.  **  See  Kings  County,  etc.,  Co. 

24  Westinghouse  Air  Brake  Co.  v.  U.  S.  Consolidated,  etc.,  Co., 

v.  Christensen  Eng.  Co.,  128  F.  R.  182  F.  R.  59,  1910. 

437,  1904;  Van  Epps  v.  United  26  Chase  v.  Fillebrown,  58  F.  R. 

Box  Board  &  Paper  Co.,  143  F.  378,  1893;  Ideal  Stopper  Co.  v. 

R.  869,  1906;  Hyde  v.  Minerals  Crown    Cork    &    Seal    Co.,    131 

Separation,  Ltd.,  214  F.  R.  100,  F.  R.  244,  1904. 

1914.    Contra    Hale    &    Kilburn  26°  Westinghouse  Air-Brake  Co. 

Mfg.  Co.  v.  Oneonta,  etc.,  Ry.  v.  Great  Northern  Ry.  Co.,  88 

Co.,  129  F.  R.  598,  1904.  F.  R.  263,  1898;  Asbestos  Shingle, 


74  NOVELTY  [(HAP.    III. 

And  a  claim  for  an  article  of  manufacture  may  he  antici- 
pated by  a  prior  patent  or  printed  publication,  which 
describes  the  article,  without  describing  any  process  of 
making  it;  provided  a  knowledge  of  the  article  would  teach 
a  skillful  mechanic  some  process  of  making  it.27 

§  58.  Novelty  is  not  negatived  by  any  prior  abandoned 
application  for  a  patent.28  Abandoned  applications  for 
patents  are  not,  by  the  statutes,  made  bars  to  patents  to 
later  applicants.  They  furnish  no  evidence  that  the  proc- 
esses or  things  they  describe  were  ever  made  or  used  any- 
where. Being  only  pen  and  ink  representations  of  what 
may  have  existed  only  as  mental  conceptions  of  the  men 
who  put  them  upon  paper,  they  do  not  prove  that  the  proc- 
esses or  things  which  they  depict  were  ever  known  in  any 
country.  Nor  can  they  be  classed  among  printed  publica- 
tions, for  they  are  usually  in  writing,  and  are  not  published 
by  the  Patent  Office.  It  is  true  that  certified  copies  of 
abandoned  applications  are  sometimes  obtained,  and  may 
be  published  by  those  who  obtain  them,  but  such  a  pub- 
lication will  operate  as  of  its  own  date,  and  not  as  of  the 
date  of  the  application. 

§  59.  When  there  is  evidence  that  he  who  made  and 
abandoned  an  application  for  a  patent,  made  also  some 
effort  to  carry  his  invention  into  practical  use,  then  that 
application  is  admissible  in  evidence  to  aid  the  court  to  de- 
termine the  date  and  the  nature  of  the  invention  which  was 
sought  to  be  embodied  in  a  working  form.  If,  however, 
upon  the  whole  of  the  evidence,  it  appears  that  what  the 

etc.,  Co.  v.  H.  W.  Johns-Mansville  guisher  Co.  v.  Phila.  Extinguisher 

Co.,  184  F.  R.  620,  1910.  Co.,  1  Bann.  &  Ard.  177,  1874; 

27  Cohn  v.  Corset  Co.,  96  U.  S.  Lyman  Ventilating  &  Refrigerator 
366,  1876;  In  re  Schaeffer,  2  App.  Co.  v.  Lalor,  1  Bann.  &  Ard.  403, 
D.  C.  8,  1893.  1874;    Interurban    Ry.    &    Ter- 

28  Corn-planter  Patent,  23  Wal-  minalCo.v.  Westinghouse  Electric 
lace,   211,    1874;   N.   W.   Extin-  &  Mfg.  Co.,  186  F.  R.  166,  1911. 


CHAP.    III.]  NOVELTY  75 

inventor  did,  outside  of  his  abandoned  application,  did  not 
amount  to  enough  to  negative  the  novelty  of  a  subsequent 
patent  to  a  later  inventor,  then  that  abandoned  applica- 
tion becomes  immaterial  to  that  issue.29 

§  60.  Novelty  is  not  negatived  by  any  successful  appli- 
cation for  a  patent,  nor  by  any  documents  pertaining 
thereto,  different  from  the  letters  patent  issued  in  pur- 
suance thereof.30  When  such  an  application,  or  such  a 
document,  is  offered  to  prove  the  existence  of  something 
which  is  not  shown  by  the  letters  patent  themselves,  the 
justice  and  propriety  of  this  rule  is  apparent.  But  a  suc- 
cessful application  may  be  properly  used  to  prove  the 
date  of  the  invention  set  forth  therein,  and  claimed  in  the 
resulting  patent.31 

§  61.  Novelty  of  a  machine  or  manufacture,  is  not 
negatived  by  any  prior  unpublished  drawings,  no  matter 
how  completely  they  may  exhibit  the  patented  inven- 
tion,32 nor  by  any  prior  model,  no  matter  how  fully  it 
may  coincide  with  the  thing  covered  by  the  patent.33 
The  reason  of  this  rule  is  not  stated  with  fullness  in  either 
of  the  cases  which  support  it,  but  that  reason  is  deducible 
from  the  statute  and  from  the  nature  of  drawings  and  of 

29  Corn-planter  Patent,  23  Wal-  Mfg.  Co.  v.  Renchard,  9  F.  R.  293, 
lace,  211,  1874.  1881;  Odell  v.  Stout,  22  F.   R. 

30  Howes  v.  McNeal,  5  Bann.  &  159, 1884;  Pennsylvania  Diamond 
Ard.  77,  1880.  Drill  Co.  v.  Simpson,  29  F.  R.  291, 

31  Westinghouse  v.  Gas  Co.,  43  1886. 

F.  R.  588,  1890;  Barnes  Co.  v.         33  Cahoon  v.  Ring,  1  Cliff.  593, 

Walworth  Co.,  51  F.  R.  88,  1892;  1861;  Stainthorp  v.  Humiston,  4 

60  F.  R.  606,  1894;  Sundh  Elec-  Fisher,    107,    1864;    Johnson    v. 

trie  Co.  v.  Interborough  Rapid  McCullough,  4  Fisher,  170,  1870; 

Transit  Co.,  198  F.  R.  94,  1912.  Stillwell  &  Bierce  Mfg.  Co.  v.  The 

32  Ellithorp  v.  Robertson,  4  Cincinnati  Gas  Light  &  Coke  Co., 
Blatch.  309,  1859;  Draper  v.  Po-  1  Bann.  &  Ard.  610, 1875;  Bowers 
tomska  Mills,  3  Bann.  &  Ard.  v.  Von  Schmidt,  63  F.  R.  577, 
214,    1878;    Detroit    Lubricator  1894. 


70  NOVELTY  [CHAP.    III. 

models.  The  statute  provides,  relevant  to  the  newness 
of  patentable  machines  and  manufactures,  that  they  shall 
not  have  been  previously  known  or  used  by  others  in  this 
country.34  Now,  it  is  clear  that  to  use  a  model  or  a  draw- 
ing is  not  to  use  the  machine  or  manufacture  which  it 
represents;  and  it  is  equally  obvious  that  to  know  a  draw- 
ing or  a  model  is  not  the  same  thing  as  knowing  the  article 
which  that  drawing  or  model  more  or  less  imperfectly 
pictures  to  the  eye.  It  follows  that  neither  of  those  things 
can  negative  the  newness  required  by  the  statute.  Nor 
is  the  statutory  provision  on  this  point  lacking  in  good 
reasons  to  support  it.  Private  drawings  may  be  mislaid 
or  hidden,  so  as  to  preclude  all  probability  of  the  public 
ever  deriving  any  benefit  therefrom;  and  even  if  they  are 
seen  by  several  or  by  many,  they  are  apt  to  be  understood 
by  few  or  by  none.  Models  also  are  liable  to  be  secluded 
from  view  and  to  suffer  change,  and  thus  to  fail  of  propa- 
gation. Moreover,  if  a  patent  could  be  defeated  by  pro- 
ducing a  model  or  a  drawing  to  correspond  therewith, 
and  by  testifying  that  it  was  made  at  some  sufficiently 
remote  point  of  time  in  the  past,  a  strong  temptation  would 
be  offered  to  perjury.  Several  considerations  of  public 
policy  and  of  private  right  combine,  therefore,  to  justify 
the  rule  of  this  section. 

The  word  "model"  it  should  be  noted  as  used  in  the 
foregoing  connection  is  used  in  the  limited  sense  of  a 
"pattern,  a  copy,  a  representation  usually  upon  a  reduced 
scale"  and  not  in  the  sense  of  an  operative  structure 
identical  with  the  structure  of  the  patent.35 

§  62.  Novelty  is  not  negatived  by  anything  not  substan- 
tially identical  with  the  subject  of  the  patent,  even  though 

34  Revised  Statutes,  Section  Co.  v.  Wagner  Typewriter  Co., 
4886.  151  F.  R.  576,  1906. 

35  American   Writing   Machine 


CHAP.    III.]  NOVELTY  77 

the  function  of  the  prior  process  or  thing  was  identical 
with  that  of  the  patented  matter.  This  rule  follows  from 
the  doctrine  that  a  valid  patent  may  be  granted  for  a 
new  means  of  producing  an  old  result.36  But  substantial 
identity  in  some  respects,  is  consistent  with  substantial 
difference  in  others.  For  novelty  is  negatived  by  a  prior 
process  or  mechanism  which  included  the  subject  of  the 
patent,  though  it  also  included  some  other  process  or 
device.  But  if  a  patented  process  or  thing  possesses 
distinct  and  apparently  important  characteristics  not  pos- 
sessed by  any  alleged  anticipation,  the  defense  for  want 
of  novelty  will  fail.37  But  a  prior  process  or  thing,  which 
will  not  defeat  a  patent  for  want  of  novelty,  may  defeat 
it  for  want  of  invention.38  It  will  do  so  wherever  the  ob- 
served difference  corresponds  in  character  with  either  of 
those  differences  between  a  patented  process  or  thing, 
and  the  prior  art,  which  in  the  second  chapter  of  this 
book  were  shown  not  to  constitute  invention. 

Several  judicial  opinions  contain  the  statement  that 
"That  which  infringes,  if  later,  would  anticipate,  if  ear- 
lier." But  that  epigrammatic  formula  is  too  broad,  and 
those  who  have  used  it  must  have  overlooked  the  distinc- 
tion between  primary  patents  and  secondary  patents. 
That  which  would  infringe  a  primary  patent,  if  later,  may 
or  may  not  anticipate  that  patent,  if  earlier.  Where  an 
inventor  believes  his  invention  to  be  primary,  but  thinks 
it  may  possibly  turn  out  to  be  secondary,  he  may  properly 
make  his  claim  in  a  form  that  can  be  construed  to  fit  his 
invention,  in  either  event.  Afterward,  when  he  seeks  to 
suppress  a  different  but  competing  contrivance,  as  being 

36  O'Reilly  v.  Morse,  15  How-  38  Untermeyer  v.  Freund,  58 
ard,  62,  1853.  F.  R.  209,  1893;  Universal  Wind- 

37  Los  Alamitos  Sugar  Co.  v.  ing  Co.  v.  Willimantic  Linen  Co., 
Carroll,  173  F.  R.  2S0,  1909.  82  F.  R.  239,  1897. 


78  NOVEL'n  [chap.    hi. 

an  infringement  of  his  claim,  when  broadly  construed; 
that  contrivance  may  be  held  to  infringe,  if  later,  while 
not  being  held  to  anticipate,  if  earlier.  If  the  competing 
contrivance  turns  out  to  be  earlier,  it  may  have  no  effect 
upon  his  patent,  except  to  relegate  it  to  the  secondary 
position  in  the  art,  and  thus  to  limit  its  claim  so  narrowly 
t  hat  the  competing  contrivance  does  not  infringe  it.  The 
distinction  between  primary  patents  and  secondary  pat- 
ents is  further  developed  in  Sections  184,  359,  362  and  362a 
of  this  book. 

§  63.  The  rule  of  Section  62  will  probably  govern  every 
case  which  justly  comes  within  the  doctrine  that  novelty 
is  not  negatived  by  any  unsuccessful  abandoned  experi- 
ment. That  rule  is  more  comprehensive  and  reliable  than 
that  doctrine,  because  the  latter  is  subject  to  such  quali- 
fications and  explanations  that  its  practical  utility  in 
deciding  cases  is  but  small.  A  thing  may  have  been  aban- 
doned and  still  negative  the  novelty  of  a  thing  indepen- 
dently invented  long  after  that  abandonment.39  Such 
will  be  the  result  if  the  earlier  thing  was  identical  with 
the  later,  and  was  used  long  enough  to  show  that  it  would 
work.39" 

If  an  experimental  machine  or  manufacture  was  unsuc- 
cessful in  the  hands  of  its  contriver,  that  fact  must  have 
been  due  either  to  one  or  more  faults  of  principle,  or  to 
one  or  more  faults  of  construction,  or  to  one  or  more 

39  Waterman  v.  Thomson,  2  39°  Gayler  v.  Wilder,  10  How- 
Fisher,  463,  1863;  Shoup  v.  Hen-  ard,  477,  1850;  Sayles  v.  Railway 
rici,  2  Bann.  &  Ard.  249,  1876;  Co.,  4  Fisher,  588,  1871;  Stephen- 
N.  W.  Extinguisher  Co.  v.  Phila.  son  v.  Railroad  Co.,  14  F.  R.  459, 
Extinguisher  Co.,  1  Bann.  &  Ard.  1881 ;  Electrical  Accumulator  Co. 
177,  1874;  McNish  v.  Everson,  5  v.  Julien  Electric  Co.,  38  F.  R. 
Bann.  &  Ard.  484,  1880;  Merri-  131,  1889;  American  Roll  Paper 
mac  Mattress  Mfg.  Co.  v.  Feld-  Co.  v.  Weston,  51  F.  R.  240, 
man,  133  F.  R.  64,  1904.  1892. 


CHAP.    III. |  NOVELTY  70 

faults  of  each  of  these  kinds.  If  partly  or  wholly  due  to 
any  fault  of  principle,  that  very  fact  shows  that  the  un- 
successful device  was  substantially  different  from  subse- 
quent successful  patented  things.  For  that  reason  alone 
it  would  have  failed  to  negative  the  novelty  of  those  things, 
even  if  it  had  not  been  unsuccessful.  If,  on  the  other  hand, 
a  prior  device  was  unsuccessful  merely  because  its  con- 
struction was  weak,  it  is  far  from  certain  that  it  will  not  be 
held  to  negative  the  novelty  of  subsequent  devices  identi- 
cal with  it  in  plan,  mode  of  operation,  and  function.396 

The  truth,  therefore,  appears  to  be  that  an  unsuccessful 
abandoned  experimental  machine  or  manufacture,  may 
possibly  negative  the  novelty  of  a  later  invention,  and  that 
where  it  fails  to  have  that  effect,  it  would  have  failed,  even 
if  it  had  been  neither  unsuccessful  nor  abandoned.  Nov- 
elty is  to  be  ascribed  to  new  things,  regardless  of  whether 
old  and  different  things  were  successful  or  unsuccessful, 
abandoned  or  not  abandoned.  Novelty  is  to  be  denied 
to  old  things,  regardless  of  the  accidents  which  caused 
earlier  specimens  of  the  same  things  to  fail  to  operate,  or 
caused  their  use  to  be  discontinued. 

But  a  court  is  not  called  upon  to  struggle  to  decipher  an 
anticipation,  in  the  unfinished  work  and  the  surmises  of 
earlier  students  of  the  same  subject.390  And  unsuccessful 
abandoned  experiments  in  processes,  cannot  be  properly 
held  to  constitute  prior  uses  of  successful  patented  proces- 
ses in  the  same  art.40 

396  Pickering    v.     McCullough,  Bros.  v.  City  of  Owosso,  166  F.  R. 

104  U.  S.  319,   1881;  Merrimac  309,  1909. 

Mattress  Mfg.   Co.  v.  Feldman,  40  Westinghouse      Electric      & 

133  F.  R.  64,  1904;  Van  Epps  v.  Mfg.  Co.  v.  Beacon  Lamp  Co., 

United  Box  Board  &  Paper  Co.,  95  F.  R,  464,  1899;  Consolidated 

143  F.  R.  869,  1906.  Contract  Co.  v.  Hassam  Paving 

J9C  American   Graphophone    v.  Co.,  227  F.  R.  436,  1915. 
Leeds,  87  F.  R.  877, 1898;  Warren 


80  NOVELTl  [CHAP.    III. 

§  64.  A  design  as  in  the  case  of  any  other  subject-mat  ter 

<>f  a  patent  must  possess  novelty.11  The  question  of  the 
novelty  of  a  design,  is  to  be  determined  by  the  comparative 
appearance  of  that  design  and  of  prior  designs,  in  the  eyes 
of  average  observers,  and  not  by  their  comparative  ap- 
pearance in  the  eyes  of  experts  making  analytical  inspec- 
tions.12 Nor  is  the  novelty  of  any  design  negatived  by 
the  fact  that  all  of  its  features  can  be  collected  out  of 
scattered  prior  designs.43 

§  65.  Novelty  is  not  negatived  by  anything  beneficially 
incapable  of  the  function  of  the  subject  of  the  patent,  even 
though  apparently  similar  thereto.44 

In  Morey  v.  Lock  wood45  the  prior  Mau  syringe  was  set 
up  to  negative  the  novelty  of  the  syringe  of  Dr.  Davidson 
and  his  brother.  The  latter  is  the  well-known  soft  rubber 
bulb  apparatus.  The  former  was  exactly  like  it,  except 
that  the  central  part  was  a  soft  rubber  cylinder  with  me- 
tallic heads,  instead  of  a  soft  rubber  bulb.  The  theoretical 
mode  of  operation  of  the  two  syringes  was  the  same.  But 
the  Mau  apparatus  proved  to  be  of  no  practical  value,  and 
very  few  specimens  of  it  were  ever  sold;  because  the  me- 
tallic heads  of  the  cylinder  strongly  counteracted  the 

41  Weisgerber  v.  Clowney,  131  Co.,  48  F.  R.  557, 1891;  Matthews 
F.  R.  477,  1904.  &  Willard  Mfg.  Co.  v.  American 

42  Perry  v.  Starrett,  3  Bann.  &  Lamp  &  Brass  Co.,  103  F.  R.  639, 
Ard.  489,  1878;  Foster  v.  Crossin,  1900. 

23  F.  R.  402,  1885;  Kraus  v.  Fitz-         44  Crown  Cork  &  Seal  Co.  v. 

Patrick,  34  F.  R.  39,  1888;  Red-  Ideal  Stopper  Co.,  123  F.  R.  666, 

way  v.  Ohio  Stove  Co.,  38  F.  R.  1903;  Kirchberger  v.  Am.  Acety- 

583,  1889;  Paine  v.  Snowden,  46  lene  Co.,  124  F.   R.  764,    1903; 

F.    R.    189,    1891;   Anderson   v.  Dececo  Co.  v.  Gilchrist  Co.,  125 

Saint,  46  F.  R.  763,  1891.  F.  R.  293,  1903;  Farmers'  Mfg. 

43  Simpson  v.  Davis,  12  F.  R.  Co.  v.  Spruks  Mfg.  Co.,  127  F.  R. 
144,  1882;  Stearns  v.  Beard,  46  691,  1904. 

F.  R.  193,  1891;  New  York  Belt-          45  Morey  v.  Lockwood,  8  Wal- 
ing Co.  v.  New  Jersey  Car  Spring      lace,  230,  1868. 


CHAP.    [II.]  NOVELTY  81 

user's  efforts  to  compress  its  rubber  walls.  For  these 
reasons,  the  Supreme  Court  held  that  it  did  not  negative 
the  novelty  of  the  Davidson  patent. 

The  Wood  Finishing  Co.  v.  Hooper46  is  a  case  the  patent 
involved  in  which,  covered  the  employment  of  finely  pow- 
dered flint,  quartz,  or  feldspar,  mixed  with  oil  or  other 
fluent  substance,  for  the  purpose  of  filling  the  pores  of  the 
surface  of  wood.  A  prior  patent  had  been  granted  for  the 
employment  of  silicious  marl  or  infusorial  earth  for  the 
same  purpose.  It  was  shown  that  all  five  of  these  sub- 
stances consisted  mainly  of  silica,  but  that  the  first  three 
differed  from  the  last  two  in  being  non-absorbent  instead 
of  porous,  and  in  consisting  of  angular  instead  of  rounded 
particles.  These  two  differences  made  the  first  three 
substances  very  valuable  for  wood-filling,  whereas  the 
others  were  not  valuable  for  that  purpose.  Judge  Na- 
thaniel Shipman,  therefore,  decided  that  the  prior  pat- 
ent did  not  negative  the  novelty  of  the  later  one. 

Matheson  v.  Campbell47  is  a  case  which  was  based  on  a 
patent  for  a  black  dye  stuff  named  "naphthol-black." 
A  prior  dye  stuff,  named  "azo-black,"  though  made  from 
a  different  starting  material,  was  chemically  identical 
with  "naphthol-black,''  or  was  at  least  chemically  equiva- 
lent thereto.  But  the  two  dye  stuffs  were  not  beneficially 
alike;  because  "azo-black"  rubbed  off  very  badly,  and 
"  naphthol-black "  was  so  superior  thereto,  that  the  latter 
dye  stuff  entirely  superseded  the  former,  in  actual  use. 
Judge  Townsend,  therefore,  decided  that  "azo-black" 
did  not  negative  the  novelty  of  "  naphthol-black." 

It  has  been  held  that  novelty  is  not  negatived  by  a 
prior  patent  which  describes  a  device  which  is  so  similar 
to  the  patent  in  suit  as  to  constitute  an  equivalent,  if 

48  Bridgeport    Wood    Finishing  47  Matheson    v.    Campbell,    77 

Co.  v.  Hooper,  5  F.  R.  63,  1880.         F.  It.  282,  1896. 


82  no\  i:i;rv  [CHAP.   in. 

the  prior  patent  gives  do  indication  that  the  inventor  of 
the  prior  patent  contemplated  thai  his  invention  is  capable 
of  the  use  of  the  patent  in  suit.48 

§  (id.  Novelty  is  not  negatived  by  antiquity  of  parts.49 
This  rule  follows  from  the  doctrine  which  allows  patents 
for  new  combinations  of  old  elements  or  ingredients.  In 
such  cases  the  whole  is  different  from  the  sum  of  all  its 
parts,  much  as  this  printed  page  is  different  from  what  it 
would  be,  if  the  same  words  were  arranged  in  alphabetical 
order. 

If,  however,  a  new  assemblage  of  old  things  amounts 
only  to  aggregation  and  not  to  combination,50  or  if  it 
results  in  no  new  mode  of  operation,51  the  patent  which 
covers  it  will  be  void  for  want  of  invention,  though  not 
void  for  want  of  novelty. 

§  67.  Novelty  is  not  negatived  by  any  prior  accidental 
occurrence  or  production,  the  character  and  function  of 
which  was  not  recognized  until  later  than  the  date  of  the 
patented  invention  sought  to  be  anticipated  thereby.52 

48  Canda  v.  Michigan  Malleable  Lowrie  v.  Meldrum,  124  F.  R. 
Iron  Co.,  124  F.  R.  486,  1903.  761,  1904;  St.  Louis  Street,  etc., 

49  Bates  v.  Coe,  98  U.  S.  48,  Co.  v.  Am.  Street,  etc.,  Co.,  156 
1878;   Imhaeuser  v.   Buerk,    101  F.  R.  574,  1907. 

U.  S.  660,  1879;  Parks  v.  Booth,  B0  Adams  v.  Stamping  Co.,  141 
102  U.  S.  104,  1880;  Cantrell  v.  U.  S.  542,  1891;  Campbell  v. 
Wallick,  117  U.  S.  694,  1885;  Bailey,  45  F.  R.  565,  1891. 
Johnson  v.  Railroad  Co.,  33  F.  R.  61  Burt  v.  Evory,  133  U.  S.  349, 
501,  1888;  Consolidated  Roller  1890;  Florsheim  v.  Schilling,  137 
Mill  Co.  v.  Coombs,  39  F.  R.  32,  U.  S.  77,  1890. 
1889;  Bryam  v.  Friedberger,  82  52Tilghman  v.  Proctor,  102 
O.  G.  1420,  1897;  A.  B.  Dick  Co.  U.  S.  711,  1880;  Ransom  v.  New 
v.  Belke  &  Wagner  Co.,  86  F.  R.  York,  1  Fisher,  256,  1856;  Pelton 
149,  1897;  German-American  Fil-  v.  Waters,  1  Bann.  &  Ard.  399, 
ter  Co.  v.  Erdrich,  98  F.  R.  308,  1874;  Andrews  v.  Carman,  2  Bann. 
1899;  Goss  Printing-Press  Co.  v.  &  Ard.  277,  1876;  Pittsburgh  Re- 
Scott,    103    F.    R.    657,    1900;  duction  Co.   v.    Cowles    Electric 


CHA1\    I II.  | 


NOVELTY 


S3 


The  reason  of  this  rule  arises  out  of  that  point  of  patent 
law  policy,  which  rewards  persons  for  teaching  the  public 
how  to  perform  processes  and  construct  things  which 
nobody  else  in  the  United  States  knew  how  to  perform  or 
to  construct,  and  relevant  to  which  no  adequate  informa- 
tion could  be  found  in  any  public  patent  or  printed  pub- 
lication anywhere  in  the  world.  But  novelty  is  negatived 
by  proof  of  prior  use  of  a  process,  where  that  use  was 
understood  in  point  of  method,  though  not  correctly 
understood  in  point  of  result.53 

§  68.  Novelty  is  not  negatived  by  anything  which  was 
neither  designed,  nor  apparently  adapted,  nor  actually 
used,  to  perform  the  function  of  the  thing  covered  by  the 
patent,  though  it  might  have  been  made  to  perform  that 
function  by  means  not  substantially  different  from  that  of 
the  patented  invention; 54  but  this  rule  cannot  govern  any 

Co.,  55  F.  R.  307,  1893;  Chase  v.  Resisting  Paint  Co.,  233  F.  R. 
Fillebrown,  58  F.  R.  377,  1893; 
Taylor  Burner  Co.  v.  Diamond, 
72  F.  R.  184,  1896;  National  Har- 
row Co.  v.  Quick,  74  F.  R.  240, 
1896;  Wickelman  v.  A.  B.  Dick 
Co.,  88  F.  R.  266,  1898;  Tannage 
Patent  Co.  v.  Donallan,  93  F.  R. 
821,  1899;  Ajax  Metal  Co.  v. 
Brady  Brass  Co.,  155  F.  R.  409, 
1907;  Western  Tube  Co.  v. 
Rainer,  156  F.  R.  49,  1907; 
Hillard  v.  Fisher  Book  Type- 
writer Co.,  159  F.  R.  439,  1908; 
Edison  Electric  Lighting  Co.  v. 
Novelty  Incandescent  Lamp  Co., 
167  F.  R.  977,  1909;  Anthracite 
Separator  Co.  v.  Pollock,  175 
F.  R.  108,  1909;  Byerly  v.  Barber 
Asphalt  Paving  Co.,  230  F.  R. 
995,  1916;  Toch  v.  Zibell  Damp 


993,  1916. 

53  Dorlon  v.  Guie,  25  F.  R.  816, 
1885;  Schultz  Belting  Co.  v. 
Belting  Co.,  40  F.  R.  156,  1889. 

"  Topliff  v.  Topliff,  145  U.  S. 
161,  1892;  Carnegie  Steel  Co.  v. 
Cambria  Iron  Co.,  185  U.  S.  422, 
1902;  Knickerbocker  Co.  v.  Rog- 
ers, 61  F.  R.  297,  1894;  Kinnear 
&  Sager  Co.  v.  Capital  Sheet- 
Metal  Co.,  81  F.  R.  492,  1897; 
Bowers  v.  San  Francisco  Bridge 
Co.,  91  F.  R.  410,  1898;  National 
Hollow  Brake-Beam  Co.  v.  Inter- 
changeable Brake-Beam  Co.,  106 
F.  R.  702,  1901;  United  Shirt  & 
Collar  Co.  v.  Beattie,  149  F.  R. 
736,  1906;  Am.  Sales  Book  Co.  v. 
Carter-Crume  Co.,  150  F.  R. 
333,  1906. 


S-4  NOVELTX  [CHAP.    111. 

case  which  lacks  either  of  the  circumstances  upon  which  it. 
is  founded,  for  negation  of  novelty  is  not  averted  by  the 
mere  fact  that  the  inventor  of  the  prior  device  did  not 
design  it  to  perform  the  function  of  the  patented  device,65 
nor  by  the  mere  fact  that  its  ability  to  perform  that  func- 
tion is  not  apparent  to  every  beholder,  nor  by  the  mere 
fact  that  it  was  never  actually  used  for  that  purpose,  nor 
by  any  two  of  these  facts  combined.  The  same  principle 
applies  to  a  prior  patent.  Although  a  prior  patent  may 
incidentally  show  a  similar  arrangement  of  parts,  if  that 
arrangement  is  not  claimed  nor  designed  to  perform  the 
function  of  the  later  patent,  it  cannot  act  as  an  anticipa- 
tion.56 

§  69.  Novelty  is  not  negatived  by  anything  which  was 
invented,  patented,  or  described  in  a  printed  publication 
prior  to  the  granting  of  the  patent  sought  to  be  antici- 
pated, or  even  prior  to  the  application  therefor,  unless  the 
anticipating  event  occurred  prior  to  the  date  of  the  in- 
vention secured  by  that  patent.57 

One  apparent  exception  to  this  rule  has  been  stated  in 
one  leading  case  by  the  Supreme  Court,58  and  indorsed 
in  another  good  precedent  by  Judge  McKinnon.59  In 
those  instances  it  was  said  that  where  two  patents  for  the 

55  Leonard  v.  Lovell,  29  F.  R.  791,  1876;  Elizabeth  v.  Pavement 
315,  1886.  Co.,  97  U.  S.   130,   1877;  Clark 

56  Gray  Telephone  Pay  Station  Thread  Co.  v.  Willimantic  Linen 
Co.  v.  Baird  Mfg.  Co.,  174  F.  R.  Co.,  140  U.  S.  486,  1891;  Pacific 
417,  1909;  Beckwith  v.  Malleable  Cable  Ry.  Co.  v.  Butte  City  Ry. 
Iron  Range  Co.,  174  F.  R.  1001,  Co.,  58  F.  R.  422,  1893;  Western 
1910;  Kryptok  Co.  v.  Stead  Lens  Electric  Co.  v.  Capital  Telephone 
Co.,  207  F.  R.  85,  1913;  A.  R.  &  Telegraph  Co.,  86  F.  R.  771, 
Mosler  &  Co.  v.  Lurie,  209  F.  R.  1898. 

364,  1913;  Munising  Paper  Co.  v.  ^  Suffolk    Co.    v.    Hayden,    3 

American     Sulphite    Pulp    Co.,  Wallace,  315,  1865. 

228  F.  R.  700,  1915.  59  McMillin  v.  Rees,  5  Bann.  & 

57  Cochrane  v.  Deener,  94  U.  S.  Ard.  269,  1880. 


chap,   rn.j  NOVELTY  85 

same  invention  are  granted  to  the  same  inventor,  the  last, 
and  not  the  first,  is  void,  even  where  the  last  was  first 
applied  for.  The  exception  is,  however,  only  apparent, 
because  the  patent  last  applied  for  is  as  much  entitled  to 
date  from  the  making  of  the  invention  as  the  other.  The 
date  of  invention  assignable  to  the  two  patents  being  ex- 
actly the  same,  the  first  patent  will  negative  the  novelty 
of  the  last,  regardless  of  which  was  first  applied  for.  The 
saying  of  the  Supreme  Court  in  this  matter  is  not  incon- 
sistent with  the  rule  that,  in  the  absence  of  other  evidence 
of  the  dates  of  invention,  the  first  application  must  be 
taken  to  represent  the  first  invention,60  because  the  fact 
of  an  identical  inventor  is  evidence  in  such  cases  that  the 
date  of  invention  was  identical. 

And  the  saying  in  Suffolk  Co.  v.  Hayden  has  no  applica- 
bility to  a  case  where  an  inventor  takes  out  a  patent  which 
describes  and  claims  what  was  described  but  not  claimed 
in,  a  prior  patent  of  his,  because  in  such  a  case  the  prior 
patent  is  not  for  the  same  invention  as  the  last.61 

Where  several  patents  are  granted  to  one  inventor  on 
different  inventions  in  the  same  art,  the  dates  of  their  ap- 
plications, instead  of  the  dates  of  the  patents  themselves, 
in  the  absence  of  evidence  of  the  dates  of  the  making  of  the 
respective  inventions,  determine  the  relative  rank  of  those 
patents  in  the  art  to  which  they  belong.62 

When  two  applications  by  the  same  inventor  are  filed 

60  Pope  Mfg.  Co.  v.  Gormully  5  Bann.  &  Ard.  244,  1880;  Mc- 
Mfg.  Co.,  144  U.  S.  244,  1892;  Millin  v.  Rees,  5  Bann.  &  Ard. 
Pennington  v.  King,  7  F.  R.  462,  269,  1880;  Graham  v.  Mfg.  Co., 
1881.  11  F.  R.  138, 1880;  Victor  Talking 

61  Suffolk    Co.    v.    Hayden,    3  Machine  Co.  v.  American  Grapha- 
Wallace,    315,    1865;    Singer    v.  phone  Co.,  140  F.  R.  860,  1905. 
Braunsdorf,  7  Blatch.  521,  1870;         82  Barbed    Wire    Patent,     143 
Wheeler  v.  McCormick,  11  Blatch.  U.  S.  281,  1892. 

334, 1873;  Graham  v.  McCormick, 


86  \«>\  BLTY  [CHAP.    III. 

contemporaneously,  one  with  generic  claims  and  the  other 
with  specific  claims,  the  inventor  docs  not  lose  his  right 
to  the  generic  patent  because  it  happens  to  issue  after  the 
issuance  of  the  specific  patent.68  The  same  rule  applies 
when  the  patentee  files  an  application  for  an  improvement 
after  he  files  an  application  for  his  generic  invention  and 
the  patent  on  the  former  is  issued  first,  and  it  is  not  nec- 
essary for  the  application  of  the  rule  that  there  be  in  the 
later  application  an  express  disclaimer  of  the  invention  of 
the  first.61 

It  has  been  held  that  where  several  applications  de- 
scribe the  same  structure  or  process,  but  no  one  of  the 
issued  patents  claims  any  invention  claimed  in  any  of  the 
others  and  they  are  all  pending  at  the  same  time,  the  ap- 
plications and  patents  cannot  be  used  to  anticipate  each 
other.65 

In  the  absence  of  proof  as  to  the  date  of  actual  invention, 
the  date  of  issue  is  proof  of  that  fact,  and  where  two 
patents  are  issued  on  the  same  day,  the  earlier  in  number 
must  be  regarded  as  the  senior  and  earlier  in  publication.66 
The  exception  to  this  rule  is  where  the  patentee  had  an 
application  pending  for  the  later  numbered  patent  at 
the  time  when  the  earlier  numbered  patent  issued,  both 
of  which  patents  were  the  result  of  a  divided  application.67 

§  70.  In  order  to  apply  the  rule  of  the  last  section,  it  is 
necessary  to  fix  the  date  of  the  invention  covered  by  the 
patent  sought  to  be  anticipated.  In  cases  where  the  in- 
vention may  be  exhibited  in  a  drawing  or  in  a  model,  it 

83  Badische  Anilin  &  Soda  Fa-  inghouse  Electric  &  Mfg.  Co.,  191 

brik  v.  Klipstein  &  Co.,  125  F.  R.  F.  R.  350,  1911. 
543,  1903.  66  Crown  Cork  &  Seal  Co.  v. 

64  Cleveland  Foundry  Co.  v.  Standard  Stopper  Co.,  136  F.  R. 
Detroit   Vapor    Stove    Co.,    131  841,1905. 

F.  R.  853,  1904.  67  Benjamin  Electric  Mfg.  Co. 

65  Century  Electric  Co.  v.  West-      v.  Dale  Co.,  158  F.  R.  617,  1907. 


CHAP.    III.]  NOVELTY  87 

will  date  from  the  completion  of  such  a  model  or  such  a 
drawing  as  is  sufficiently  plain  to  enable  those  skilled  in 
the  art  to  understand  the  invention;68  and  patented  in- 
ventions always  date  at  least  as  early  as  the  dates  of  the 
execution  of  the  original  applications  therefor,  provided  the 
original  applications  exhibit  the  inventions  with  the  above- 
mentioned  extent  of  sufficiency.69  In  cases  where  a  pat- 
ented invention  was  explained  in  words,  without  the  aid 
of  any  model  or  any  drawing,  it  will  date  from  the  com- 
pletion of  such  a  written  description  as  would  teach  others 
how  to  make  and  use  the  invention  described.  In  cases 
where  the  inventor  makes  a  specimen  of  the  thing  invented, 
before  he  makes  any  model,  or  drawing,  or  written  de- 
scription to  represent  that  thing,  the  invention  will  date 
from  the  completion  of  that  specimen.  Perfection  is  not 
necessary  to  such  a  specimen  in  order  to  entitle  it  to  such 
an  effect.  Substantial  completeness  is  enough.70  And 
where  the  distinguishing  characteristic  of  an  invention, 
consists  of  a  composition  of  matter  capable  of  consider- 
able variations  in  its  ingredient,  the  invention  will 
date  from  the  time  when  the  first  of  those  variations 
was  reduced  to  successful  practice.71 

No  invention  ought  to  date  from  any  day  wherein  it 

68  Loom    Co.    v.    Higgins,    105  land  Plow  Co.,  212  F.  R.  727, 

U.  S.  594,  1881;  Deering  v.  Har-  1914. 

vester  Works,  155  U.  S.  298, 1894;  «»  Kearney  v.  Railroad  Co.,  32 
Heath  v.  Hildreth,  1  McArthur's  F.  R.  322,  1887;  National  Ma- 
Patent  Cases,  24,  1841;  Perry  v.  chine  Co.  v.  Brown,  36  F.  R.  321, 
Cornell,    1    McArthur's    Patent  1888. 

Cases,  78,  1847;  Farley  v.  Steam  70  National  Cash  Register  Co. 

Gauge  Co.,  1  McArthur's  Patent  v.  Store  Service  Co.,  60  F.  R.  603, 

Cases,  621,  1859;  Hubel  v.  Dick,  1894;  Coffee  v.  Guerrant,  68  0.  G. 

28  F.  R.  139,  1886;  Von  Schmidt  279,  1894. 

v.  Bowers,  80  F.  R.   140,   1897;  71  American  Sulphite  Pulp  Co. 

Moline    Plow    Co.  v.    Rock    Is-  v.  Howland  Falls  Pulp  Co.,  80 

F.  R.  401,  1897. 


88  NOVELTY  (('HAP.    III. 

had  no  existence  or  representation  outside  of  the  mind 
of  the  inventor,  no  matter  how  clear  or  how  complete 
his  mental  conception  of  its  character  and  mode  of  opera- 
tion may  have  been.  Mental  conceptions  are  not  useful 
inventions  until  they  are  so  embodied  that  the  world 
could  use  them  after  the  deaths  of  the  persons  who  con- 
ceived them.7'-  To  allow  inventions  to  take  date  from 
mental  conceptions,  would  strongly  tempt  inventors  to 
commit  perjury  in  order  to  appear  to  anticipate  real  an- 
ticipations of  their  patents. 

Whether  an  oral  description  given  by  the  inventor  to 
another,  of  a  subsequently  patented  invention,  can  give 
that  invention  a  date  earlier  than  that  to  which  it  would 
otherwise  be  entitled,  depends  upon  the  nature  of  the  in- 
vention and  the  capacity  of  the  hearer  to  understand  it 
and  remember  it.  Where  an  invention  is  abstruse  or  is 
complicated,  and  where  it  is  not  certain  that  the  hearer 
understood  it  and  has  remembered  it  well  enough  to  com- 
municate it  to  the  world  in  case  of  the  inventor's  death, 
the  invention  ought  not  to  date  from  such  a  description.73 
But  where  it  is  shown  that  the  person  to  whom  such  an 
oral  description  was  given,  understood  it  completely,  and 
has  remembered  it  accurately,  a  patented  invention  msiy 
date  back  to  that  oral  description.74    In  such  cases  it  is 

72  Clark  Thread  Co.  r.Williman-  Stephens  v.  Salisbury,  1  McAr- 
tic  Linen  Co.,  140  U.  S.  489, 1891;  thur's  Patent  Cases,  385,  1855; 
Voightman  v.  Perkinson,  138  F.  Hill  v.  Dunklee,  1  McArthur's 
R.  56,  1905;  Killeen  v.  Buffalo  Patent  Cases,  483,  1857;  David- 
Furnace  Co.,  140  F.  R.  33,  1905;  son#.  Lewis,  1  McArthur's  Patent 
Corrington  v.  Westinghouse  Air  Cases,  599,  1858;  McCormick 
Brake  Co.,  178  F.  R.  711,  1910.  Machine  Co.  v.  Harvester  Works, 

73  Stephens  v.  Salisbury,  1  Mc-  42  F.  R.  153,  1890;  Merrow  v. 
Arthur's  Patent  Cases,  385,  1855,  Shoemaker,  59  F.  R.  122,  1893; 

74  Philadelphia  &  Trenton  R.  R.  Westinghouse  Electric  &  Mfg. 
v.  Stimpson,  14  Peters,  448,  1840;  Co.  v.  Roberts,  125  F.  R.  6,  1903. 


CHAP.    III.]  NOVELTY  89 

not  necessary  that  all  the  mechanical  details  shall  be  ex- 
pressed in  the  disclosure  or  even  have  been  thought  out.7:' 
The  reason  for  allowing  a  patented  invention  to  date  back 
to  an  oral  or  a  written  description,  or  to  a  drawing  or  a 
model,  as  the  case  may  be,  while  an  unpatented  invention, 
which  is  set  up  to  negative  the  novelty  of  a  patented  in- 
vention, is  not  allowed  to  date  back  to  either  of  those 
things,  resides  in  the  fact  that  those  things  are  incipient 
in  their  nature,  and  in  the  principle  that  an  invention  which 
is  ultimately  developed  and  given  to  the  world  in  a  patent, 
ought  equitably  to  date  from  such  an  incipiency,  while 
the  rights  of  a  patentee  ought  not  to  be  impaired  by  a  similar 
incipiency  which  was  never  developed  into  a  patent.76 

When  a  patent  is  questioned  in  point  of  novelty,  and 
when  that  question  depends  upon  the  date  of  the  invention 
claimed  in  that  patent,  it  is  not  material  whether  the  event, 
which  constituted  that  invention,  occurred  in  the  United 
States  or  in  some  other  country.77 

For  a  very  complete  discussion  of  the  whole  subject  of 
priority  of  date  of  invention  as  between  two  inventors, 
see  the  opinion  of  Judge  Colt  in  Automatic  Weighing 
Machine  Co.  v.  Pneumatic  Scale  Corporation.78 

§  71.  Novelty  is  negatived  by  prior  knowledge  and  use 
in  this  country,  by  even  a  single  person,  of  the  thing  pat- 
ented.79  This  rules  applies  even  to  cases  where  that  knowl- 

75  Westinghouse  Electric  &  616,  1899;  Badische  Anilin  & 
Mfg.  Co.  v.  Stanley  Inst.  Co.,  Soda  Fabrik  v.  Klipstein  &  Co., 
133  F.  R.  167,  1904.  125  F.  R.  543,  1903. 

76  Bowers  v.  Von  Schmidt,  63  78  Automatic  Weighing  Machine 
F.  R.  577,  1894.  Co.  v.  Pneumatic  Scale  Corpora- 

"Hanifen  v.  E.   H.  Godshalk  tion,  166  F.  R.  288,  1909;  Mc- 

Co.,  78  F.  R.  811,  1896;  Hanifen  Creery  Engineering  Co.  v.  Mass. 

v.  Price,  96  F.  R.  441,  1899;  Wels-  Fan  Co.,  195  F.  R.  498,  1912. 

bach  Light  Co.  v.  American  In-  79  Coffin  v.  Ogden,  18  Wallace, 

candescent  Lamp  Co.,  98  F.  R.  120,  1873;  Brush  v.  Condit,  132 


90  NOVELTY  [<HAP.    III. 

edge  and  use  were  purposely  kepi  secret ; s"  and  il  applies 
no  matter  whether  or  qoI  tli<v  prior  structure  was  used.81 

In  Gayler  v.  Wilder  v'  tin1  Supreme  Court  announced  an 
exception  to  this  rule,  but  in  a  later  case  it  intimated  a  de- 
nial, or  at  least  a  doubt,  of  the  validity  of  that  exception.83 
According  to  the  opinion  of  a  majority  of  the  court  in  the 
first  case,  a  single  instance  of  prior  knowledge  and  use  will 
not  negative  novelty,  if  that  use  had  ceased  when  the  pat- 
ent was  granted,  and  that  knowledge  was  forgotten  until 
called  to  mind  by  the  reinvention.  A  recent  case  holds 
that  under  the  rule  of  Gayler  v.  Wilder  the  prior  use 
must  be  so  far  understood  and  practiced  or  persisted  in 
as  to  become  an  established  fact,  accessible  to  the  public 
and  contributing  definitely  to  the  sum  of  human  knowl- 
edge, and  that  the  prior  use  must  have  been  of  an  article 
which  was  complete  and  capable  of  producing  the  result 
accomplished  by  the  patented  article  and  not  merely  one 
which  by  modification  could  be  made  to  perform  the  same 
function.84  The  latter  proposition  is  a  reiteration  of  one 
of  the  doctrines  of  Coffin  v.  Ogden. 

This  is  the  doctrine  that  novelty  is  not  negatived  by  a 
forgotten  art,  even  if  that  art  is  remembered  again  by  one 
who  formerly  knew  it,  when  his  mind  is  prompted  by  new 
knowledge  of  its  reinvention  by  another.    This  doctrine  is 

U.  S.  39,  1889;  Toch  v.  Zibbell  82  Gayler  v.  Wilder,  10  Howard, 

Damp  Resisting  Paint  Co.,  231  477,  1850. 

F.  R.  711,  1916.  83  Coffin  v.  Ogden,  18  Wallace, 

80  Reed  v.  Cutter,  1  Story,  598,  125,  1873;  for  a  further  discussion 

1841.  of  the  doctrine  and  as  to  what  is 

S1  Bedford  v.  Hunt,   1  Mason,  meant  by  the  word  "forgotten" 

301,  1817;  Rich  v.  Lippincott,  2  in  connection  with  it  see  Buser  v. 

Fisher,   2,   1853;   Imperial  Brass  Novelty    Tufting    Machine    Co., 

Mfg.  Co.  v.  Nelson,   194  F.   R.  151  F.  R.  478,  1907. 

165,  1912.  84  Diamond  Patent  Co.  v.  S.  E. 

Can- Co.,  217  F.  R.  400,  1914. 


CHAP.    III.]  NOVELTY  91 

applicable  to  a  forgotten  "art"  or  "process";  because  a 
process  is  intangible  and  exists  only  while  its  constituent 
acts  are  being  performed.  But  the  doctrine  of  lost  or  for- 
gotten arts  is  not  applicable  to  a  machine  or  a  manufac- 
ture, which  still  exists  in  its  entirety,  and  can  be  found 
whenever  it  is  diligently  sought,  and  can  be  understood 
whenever  it  is  intelligently  inspected.  In  Gayler  v.  Wilder, 
the  doctrine  was  applied  to  the  use  of  gypsum  in  the 
spaces  between  the  walls  of  iron  safes.  But  the  doctrine 
is  not  applicable  to  any  composition  of  matter,  which  is 
patentable  independent  of  any  environment,  and  which 
still  exists,  and  can  be  found  and  identified,  when  it  is 
sought  and  analyzed.  Nor  is  the  doctrine  applicable  to  a 
design,  which  may  have  remained  forgotten  and  unseen 
in  a  book  in  a  library  for  many  years,  but  which  can  be 
found  by  regular  searching,  and  can  be  appreciated  when 
it  is  found. 

§  72.  Novelty  is  also  negatived  by  evidence  that  even 
one  specimen  of  the  thing  patented,  existed  and  was  known 
in  this  country  prior  to  its  invention  by  the  patentee,  even 
though  it  was  not  used  prior  to  that  time.85  This  rule  re- 
sults from  the  statute  which  provides  that  things,  in  order 
to  be  patentable,  must  not  have  been  known  or  used  by 
others  in  this  country.86  If,  however,  the  identity  of  the 
patented  and  the  prior  article  can  be  known  only  by  actual 
use,  and  if  the  prior  article  never  was  actually  used  till 
after  the  date  of  the  patented  invention,  then  its  prior 
existence  will  not  negative  novelty.87    In  that  case  though 

85  Corn-Planter  Patent,  23  Wal-  239,     1897;    see    Lincoln     Iron 

lace,  220,  1874;  Parker  v.  Fergu-  Works    v.    M'Whirter    Co.,    142 

son,  1  Blatch.  408,  1849;  Pitts  v.  F.  R.  967, 1905. 

Wemple,  2  Fisher,  15,  1855;  Stitt  86  Revised     Statutes,     Section 

v.  Railroad  Co.,  22  F.  R.  650,  4886. 

1884;  Universal  Winding  Co.  v.  87  Sayles    v.    Railway    Co.,    4 

Willimantic  Linen  Co.,  82  F.  R.  Fisher,      588,      1871;     Stitt     v. 


92  NOVELTY  [CHAP.    III. 

its  existence  was  known  prior  to  the  invention  of  the 
patented  thing,  it  was  not  known  to  be  what  the  patented 
tiling  afterward  was.  Knowledge,  in  order  to  negative 
novelty,  must  include  knowledge  of  the  character,  as*  well 
as  knowledge  of  the  existence,  of  the  prior  thing. 

§  73.  Negation  of  novelty  is  not  averted  by  the  fact  that 
the  inventor  had  no  knowledge  of  the  anticipating  matter 
when  he  made  the  invention  covered  by  the  patent.88  The 
patent  laws  do  not  reward  people  for  producing  things  which, 
though  new  to  them,  are  old  to  others  in  this  country. 

§  74.  Negation  of  novelty  in  a  machine  is  not  averted  by 
the  fact  that  the  anticipating  machine  operated  upon  a  dif- 
ferent material.89  And  negation  of  novelty  in  a  manufact- 
ure or  a  composition  of  matter,  is  not  averted  by  the  fact 
that  the  anticipating  substance  was  made  by  a  different 
process,  or  derived  from  a  different  source,  from  that  which 
produced  the  patented  substance;  for  it  does  not  make  an 
old  thing  new  to  derive  it  from  a  new  and  unexpected 
quarter  90  or  to  make  it  by  a  new  and  improved  method.91 

§  75.  Questions  of  novelty  are  questions  of  fact.9-  This 
point  is  very  obvious,  except  in  cases  where  the  prior  thing 
is  a  patent  or  printed  publication.  In  those  cases  it  may 
be  supposed  that  questions  of  novelty  are  questions  of  law 

Railroad    Co.,    22    F.    R,    650,  &  Soda  Fabrik,   111  U.  S.  311, 

1884.  1883;    Badische   Anilin    &    Soda 

88  Derby  v.  Thompson,  146  Fabrik  v.  Cummins,  4  Bann.  & 
U.  S.  481,  1892;  Many  v.  Sizer,  Ard.  490,  1879. 

1  Fisher,  19,  1849;  New  Depar-  91  Cottle  v.  Krementz,  31  F.  R. 

ture  Bell  Co.  v.  Bevin  Bros.  Mfg.  42,  1887;    Societe    Fabriquer    de 

Co.,  73  F.  R.  476,  1896;  Universal  Produits  Chimiques,  etc.,  v.  Geo. 

Winding  Co.  v.  Willimantic  Linen  Lueders  &  Co.,  135  F.   R.   102, 

Co.,  82  F.  R.  240, 1897.  1904. 

89  United  States  Peg  Wood,  S.  &  92  Battin  v.  Taggert,  17  How- 
L.  B.  Co.  v.  B.  F.  Sturtevant  Co.,  ard,  74,  1854;  Turrill  v.  Railroad 
122  F.  R.  472,  1903.  Co.,  1  Wallace,  491,  1863. 

90  Cochrane  v.  Badische  Anilin 


CHAP.    III.]  NOVELTY  93 

arising  on  the  construction  of  documents.  The  point  has, 
however,  been  settled  by  the  Supreme  Court,  in  a  case  in- 
volving the  consideration  of  a  prior  patent,  and  bearing 
with  equal  logical  force  upon  a  prior  printed  publication.9:! 
In  that  case  it  was  held  that  the  question  whether  the 
novelty  of  a  patent  is  negatived  by  a  prior  patent,  depends 
not  upon  the  construction  of  the  latter,  but  depends  rather 
upon  the  outward  embodiment  of  the  terms  contained  in 
the  latter  document;  and  that  such  outward  embodiment 
is  to  be  properly  sought,  like  the  explanation  of  latent  am- 
biguities arising  from  the  description  of  external  things,  by 
evidence  in  pais.  The  court  accordingly  indorsed  the  prop- 
osition that  such  questions  belong  to  the  province  of  evi- 
dence, and  not  to  that  of  construction;  and  said  that  even 
where  no  testimony  is  required  to  explain  the  terms  of  art 
or  the  description  contained  in  the  respective  documents, 
the  question  is  still  to  be  treated  as  a  question  of  fact. 

§  76.  The  burden  of  proof  of  a  want  of  novelty  rests 
upon  him  who  avers  it,  and  every  reasonable  doubt 
should  be  resolved  against  him.94  Novelty  can  only  be 
negatived  by  proof  which  puts  the  fact  beyond  a  reason- 
able doubt.95    But  such  proof  can  be  made  with  less  evi- 

93  Bischoff  v.  Wethered,  9  Wal-  v.  Davis,  34  F.  R.  785, 1888;  How- 
lace,  812,  1869.  ard  v.  Plow  Works,  35  F.  R.  745, 

94  Coffin  v.  Ogden,  18  Wallace,  1888;  Pacific  Cable  Ry.  Co.  v. 
120, 1873;  Cantrell  v.  Wallick,  117  Butte  City  Ry.  Co.,  55  F.  R.  764, 
U.  S.  696,  1885;  Parham  v.  Ma-  1893;  Kinnear  &  Gager  Co.  v. 
chine  Co.,  4  Fisher,  482,  1871;  Capital  Sheet-Metal  Co.,  81  F.  R. 
Webster  Loom  Co.  v.  Higgins,  4  492,  1897;  Cleveland  Foundry 
Bann.  &  Ard.  88,  1879;  Shirley  v.  Co.  v.  Kauffman,  135  F.  R.  360, 
Sanderson,   8  F.   R.   908,    1881;  1905. 

Green  v.  French,  11  F.  R.  591,  « Barbed    Wire    Patent,    143 

1882;  Duffy  v.  Reynolds,  24  F.  R.  U.  S.  284, 1892;  Wood  v.  Mill  Co., 

858,  1885;  Dreyfus  v.  Schneider,  4    Fisher,    560,    1871;   Hawes  v. 

25  F.  R.  481,  1885;  Osborne  v.  Antisdel,  2  Bann.  &  Ard.  10,  1875; 

Glazier,  31  F.  R.  404,  1887;  Smith  Bignall  v.  Harvey,  5  Bann.  &  Ard. 


04 


\o\  l.l.l'V 


[CHAP.    III. 


deuce,  where  anticipation  is  probable,  than  where  it  is 
less  to  be  expected.90  And  testimony  of  want  of  novelty 
is  not  overthrown,  by  prima  facie  improbability  that  has 
been  explained  away;97  or  by  innocent  errors  on  collateral 
points;98  or  even  by  impeaching  a  principal  witness,  if 
his  testimony  is  shown  to  be  true  by  other  evidence,  which 
his  bad  character  could  not  vitiate.99  The  unsupported 
oral  testimony  of  one  witness  is  seldom  strong  enough  to 
negative  the  novelty  of  the  patent  beyond  a  reasonable 
doubt;  10°  and  the  oral  testimony  of  many  witnesses,  if 
unsupported  by  any  evidence  consisting  of  documents 
or  things,  must  be  very  reasonable  and  very  strong,  in 
order  to  negative  novelty.101     This  rule  of  reasonable 


636,  1880;  Worswick  Mfg.  Co.  v. 
Buffalo,  20  F.  R.  126,  1884; 
Thayer  v.  Hart,  20  F.  R.  694, 
1884;  Everest  v.  Oil  Co.,  20  F.  R. 
849,  1884;  American  Bell  Tele- 
phone Co.  v.  People's  Telephone 
Co.,  22  F.  R.  313,  1884;  Mc- 
Donald v.  Whitney,  24  F.  R,  600, 
1885;  Jennings  v.  Kibbe,  24  F.  R. 
698,    1885;   Wetherell   v.   Keith, 

27  F.  R.  364,  1886;  Hobbie  v. 
Smith,  27  F.  R.  659,  1886;  Co- 
hansey    Mfg.    Co.    v.    Wharton, 

28  F.  R.  191,  1886;  American 
Bell  Telephone  Co.  v.  Globe  Tele- 
phone Co.,  31  F.  R.  733,  1887; 
Hunt  Bros.  Packing  Co.  v.  Cas- 
sidy,  53  F.  R.  260,  1893;  Dodge 
v.  Post,  76  F.  R.  809,  1896;  Na- 
tional Hollow  Brake-Beam  Co.  v. 
Interchangeable  Brake-Beam  Co., 
106  F.  R.  703,  1901;  Young  v. 
Wolfe,  120  F.  R.  959,  1903. 

96  Lee  v.  Upson  &  Hart  Co.,  43 


F.  R.  670,  1890;  Rochester  Coach 
Lace  Co.  v.  Schaefer,  46  F.  R. 
190,  1891;  Moline  Plow  Co.  v. 
Parlin  &  Orendorff  Co.,  84  F.  R. 
351,  1897. 

97  Parlin  &  Orendorff  Co.  v.  Mo- 
line Plow  Co.,  89  F.  R.  330,  1898; 
Diamond  Drill  &  Machine  Co.  v. 
Kelly  Bros.,  120  F.  R.  299,  1903. 

98  Simmonds  v.  Morrison,  44 
F.  R.  762,  1891. 

99  Olin  v.  Timken,  155  U.  S.  152, 
1894;  Timken  v.  Olin,  37  F.  R. 
207,  1888. 

100  Bowman  v.  DeGraw,  60 
F.  R.  911,  1894;  Mast,  Foos  & 
Co.  v.  Dempster  Mill  Mfg.  Co., 
82  F.  R.  332,  1897;  Single  Track 
Overhead  Ry.  Mfg.  Co.  v.  Roden, 
98  F.  R.  619, 1895;  Peters  v.  Union 
Biscuit  Co.,  120  F.  R.  683,  1903. 

101  Barbed  Wire  Patent,  143 
U.  S.  284,  1892;  Deering  v.  Har- 
vester Works,  155  U.  S.  300, 1894; 


CHAP.    III. J 


NOVELTY 


'.»:, 


doubt  applies  where  the  question  of  novelty  depends 
upon  the  identity  of  the  patented  thing  or  process  with 
the  alleged  anticipation;  as  well  as  where  that  question 
depends  upon  the  existence  or  the  priority  of  the  latter.102 

Where  an  anticipating  fact  prior  to  the  date  of  a  patent 
is  proved  beyond  reasonable  doubt,  the  burden  is  shifted  to 
the  plaintiff  to  prove,  by  convincing  preponderance  of 
evidence,  that  his  invention  was  made  still  earlier  than 
that  fact  occurred;  and  if  the  plaintiff  does  not  introduce 
enough  evidence  to  strongly  outweigh  whatever  evidence 
is  introduced  to  the  contrary,  the  patent  must  be  held  to 
be  void  for  want  of  novelty.103 

The  "reasonable  doubt"  rule  is  not  however  entirely 
approved.  In  fact  the  degree  of  proof  required  to  es- 
tablish anticipation  or  prior  invention  is  stated  in  such 


American  Roll  Paper  Co.  v.  Wes- 
ton, 59  F.  R.  150,  1893;  Knicker- 
bocker Co.  v.  Rogers,  61  F.  R. 
297,  1894;  Pratt  v.  Sencenbaugh, 
04  F.  R.  781,  1893;  Campbell 
Printing-Press  Co.  v.  Marden,  64 
F.  R.  785,  1894;  Wickes  v.  Lock- 
wood,  05  F.  R.  611,  1895;  Singer 
Mfg.  Co.  v.  Schenck,  68  F.  R.  194, 
1895;  Rodwell  v.  V.  F.  Tuck- 
farber  Co.,  127  F.  R.  138,  1903; 
Parker  v.  Stebler,  177  F.  R.  210, 
1910;  Emerson  &  Norris  Co.  v. 
Simpson  Bros.  Corporation,  202 
F.  R.  747,  1913;  Greenwald  Bros. 
v.  LaVogue  Petticoat  Co.,  226 
F.  R.  448,  1915. 

102  Pittsburgh  Reduction  Co.  v. 
Aluminum  Co.,  55  F.  R.  308, 
1S92;  Simonds  Rolling-Mach. 
Co.  v.  Hathorn  Mfg.  Co.,  93  F.  R. 
961,  1899. 


™  Clark  Thread  Co.  v.  Wil- 
limantic  Linen  Co.,  140  U.  S.  492, 
1891;  Caverly  v.  Deere,  52  F.  R. 
760,  1892;  Curtis  v.  Atlanta  Street 
Railway  Co.,  56  F.  R.  600,  1892; 
Simmons  v.  Standard  Oil  Co.,  62 
F.  R.  930,  1894;  Ecaubert  v.  Ap- 
pleton,  67  F.  R.  925, 1895;  Brooks 
v.  Sacks,  81  F.  R.  405,  1897;  Rog- 
ers v.  Fitch,  81  F.  R.  962,  1897; 
Wheaton  v.  Kendall,  85  F.  R.  672, 
1898;  Westinghouse  Electric  & 
Mfg.  Co.  v.  Saranac  Lake  Electric 
Light  Co.,  108  F.  R.  222,  1901; 
Westinghouse  Electric  &  Mfg. 
Co.  v.  Catskill  Illuminating  & 
Power  Co.,  121  F.  R.  832,  1903; 
Sacks  v.  Kufferle,  127  F.  R.  569, 
1904;  (beyond  reasonable  doubt) 
Columbus  Chain  Co.  v.  Standard 
Chain  Co.,  148  F.  R.  622,  1906; 
New  England  Motor  Co.  v.  B.  F. 


96 


\o\ BLTY 


|«  HAP.    III. 


various  ways  thai  it  is  useless  to  attempt  to  make  a  general 
statement.  It  may  be  remarked  that  if  the  "reasonable 
doubt"  rule  is  applied  in  its  full  sense  as  the  phrase  is 
used  in  criminal  law  it  has  few  parallels  in  civil  jurispru- 
dence. Some  of  the  phrases  used  in  defining  the  degree 
of  proof  required  are  found  in  the  note.101 

An  exception  to  the  "reasonable  doubt"  rule  has  been 
noted  in  the  ninth  circuit  where  the  question  of  priority 
of  invention  is  at  issue,  and  where  at  the  time  of  issu- 
ance of  the  patent  in  suit  the  defendant  had  an  applica- 
tion pending  for  the  same  invention  and  no  interference 
was    declared.10' 


Sturtevant  Co.,  150  F.  R.  131, 
1906;  (if  not  with  equal  certainty, 
then  to  the  satisfaction  of  the 
court)  Consolidated  Ry.,  etc., 
Co.  v.  Adams  &  Westlake  Co., 
161  F.  R.  343,  1908;  Torrey  v. 
Hancock,  184  F.  R.  61,  1910. 

104  (Full,  unequivocal  and  con- 
vincing) Westinghouse  Elec.  & 
Mfg.  Co.  v.  Stanley  Inst.  Co., 
133  F.  R.  167,  1904;  (proofs 
which  satisfy  the  court,  ib.); 
(beyond  reasonable  doubt)  Petti- 
bone,  etc.,  Co.  v.  Pennsylvania 
Steel  Co.,  133  F.  R.  730,  1904; 
(strong  and  convincing)  Chishohn 
v.  Fleming,  133  F.  R.  924,  1905; 
(clear  and  satisfactorj^,  no  hard 
and  fast  rule)  Sipp  Electric,  etc., 
Co.  v.  Atwood-Morrison  Co.,  142 
F.  R.  149,  1905;  (beyond  fair 
doubt)  Bradley  v.  Eccles,  144 
F.  R,  90,  1906;  (exceptionally 
clear    and    convincing)     United 


Shirt  &  Collar  Co.  v.  Beattie,  149 
F.  R.  736,  1906;  (beyond  rea- 
sonable doubt)  Buser  v.  Novelty 
Tufting  Machine  Co.,  151  F.  R. 
478,  1907;  (so  clear  and  satisfac- 
tory as  to  convince  the  court 
beyond  a  reasonable  doubt) 
Parker  v.  Stebler,  177  F.  R.  210, 
1910;  T.  B.  Wood's  Sons  Co.  v. 
Valley  Iron  Works,  191  F.  R. 
196,  1911;  DeLavel  Separator  Co. 
v.  Iowa  Dairy  Separator  Co., 
194  F.  R.  423,  1912;  (clear,  un- 
equivocal and  convincing)  De- 
Laski  &  Thropp,  etc.,  Co.  v. 
Fisk  Rubber  Co.,  203  F.  R.  986, 
1913;  (beyond  a  reasonable  doubt) 
H.  J.  Heinz  Co.  v.  Cohn,  207 
F.  R.  547,  1913;  (a  high  degree  of 
E  proof)  Wright  v.  Brownlee,  212 
"~  F.  R.  157,  1914;  Drum  v.  Turner, 
219  F.  R.  188, 1914. 

105  Wilson  &  Willard  Mfg.  Co. 
v.  Bole,  227  F.  R.  607,  1915. 


CHAPTER  IV 

UTILITY 

77.  Utility  necessary  to  patent-  work  evil,  and  sometimes 

ability.  work  good. 

78.  Utility  is  negatived  by  lack  of      83.  Functions  thought  by  some 

function.  to  be  good,  and  by  others  to 

79.  Perfection   not   necessary   to  be  bad. 

utility.  84.  Good     functions     in     wrong 

80.  Beauty  has  utility.  places. 

81.  Utility    is    negatived    where      85.  Doubts  relevant  to  utility  to 

function  is  evil.  be  solved  against  infringers. 

82.  Functions    which    sometimes 

§  77.  The  useful  arts  are  those  that  Congress  is  author- 
ized by  the  Constitution  to  promote,  and  accordingly  the 
statute  includes  utility  among  the  qualities  which  a  proc- 
ess or  a  thing  must  have  in  order  to  be  patentable.1  To 
possess  utility,  a  thing  or  a  process  must  be  capable  of 
producing  a  result,  and  that  result  must  be  a  good  result. 
Both  these  elements  inhere  in  the  meaning  of  the  word; 
and  they  are  so  distinct  as  to  require  separate  explanation. 

Utility,  whatever  the  term  may  have  meant  in  connec- 
tion with  design  patents,  is  not  required  under  the  pres- 
ent law  as  an  element  of  a  design  patent.2  And  although 
the  present  statute  has  dropped  the  specific  provision 
that  a  new  shape  or  configuration  given  to  an  article 
shall  be  patentable  as  a  design,  a  design  which  consists 
merely  of  a  new  and  ornamental  shape  is  still  patentable 

1  Revised  Statutes,  Section  32  Stat.  193;  H.  S.  EarleMfg.  Co. 
4886.  v.  Clark  &  Parsons  Co.,  154  F.  R. 

2  Revised  Statutes,  Sec.  4929,  851,  1907. 
as  amended  May  9, 1902,  Ch.  783, 

97 


98  ITILITY  [CHAP.    IV. 

as  such.8  And  although  the  word  useful  has  also  been 
dropped  from  the  statute  it  is  not  necessary  that  the  thing 
t  o  he  patented  shall  have  been  made  for  the  sole  purpose  of 
ornament . ' 

§  78.  Utility  is  absent  from  all  processes  and  devices 
which  cannot  be  used  to  perform  their  specified  functions, 
and  patents  for  such  subjects  are  therefore  void.''  This 
rule  applies  even  to  cases  in  which,  by  simply  adding  new 
elements  to  useless  contrivances,  highly  useful  inventions 
are  produced. 

In  Burrall  v.  Jewett,6  the  patent  covered  the  cylinder  of 
a  threshing-machine,  having  rows  of  teeth  inserted  in  its 
convex  surface  and  revolving  within  a  barrel  which  had  no 
teeth.  The  contrivance  was  confessedly  useless.  After 
the  patent  for  it  was  granted,  the  patentee,  or  some  other 
person,  by  simply  inserting  rows  of  teeth  in  the  concave 
surface  of  the  barrel,  produced  the  successful  threshing- 
machine,  which  has  everywhere  succeeded  the  ancient 
flail.  The  law  applicable  to  these  facts  was  stated  by 
Chancellor  Walworth  in  the  following  terms:  "The 
patent  is  void  if  the  machine  will  not  answer  the  purpose 
for  which  it  was  intended,  without  some  addition,  adjust- 
ment, or  alteration,  which  the  mechanic  who  is  to  con- 
struct it  must  introduce  of  his  own  invention,  and  which 
had  not  been  invented  or  discovered  by  the  patentee  at  the 
time  his  patent  was  issued." 

In  Bliss  v.  Brooklyn 7  the  patent  covered  a  certain  hose- 
Theodore  W.  Foster  &  Bro.      522,  1873;  Rowe  v.  Blanchard,  18 
Co.  v.  Tilden-Thurber  Co.,  200      Wisconsin,  465,  1864;  Carter  Ma- 
F.  R.  54,  1912.  chine  Co.  v.  Hanes,  70  F.  R.  864, 

4  Mygatt  v.  Schaffer,  218  F.  R,      1895. 

827,     1914;    Ashley    v.    Weeks-  «  Burrall  v.  Jewett,  2  Paige,  143, 

Numan  Co.,  220  F.  R.  899,  1915.  1830. 

5  Coupe  v.  Royer,  155  U.  S.  574,  '  Bliss  v.  Brooklyn,  10  Blatch. 
1895;  Bliss  v.  Brooklyn,  10  Blatch.  522,  1883. 


CHAP.    IV.]  UTILITY  99 

coupling.  The  contrivance  was  worthless,  because  it 
proved  on  trial  to  be  inoperative.  The  subsequent  ad- 
dition of  a  lug  to  one  of  its  parts,  transferred  the  coupling 
into  a  useful  invention.  Judge  Benedict  nevertheless 
held  the  patent  to  be  invalid  for  want  of  utility. 

§  79.  If,  however,  an  invention  performs  a  good  func- 
tion, though  but  imperfectly,  its  utility  is  not  negatived 
by  the  fact  that  it  is  susceptible  of  improvement,  which 
will  make  it  operate  much  better,8  nor  by  the  fact  that 
some  prior  invention  performed  the  same  function  quite 
as  well,9  or  even  performed  it  with  superior  excellence.10 
Nor  is  utility  negatived  by  later  inventions  which  are  so 
much  superior  to  the  patented  process  or  thing,  that  they 
entirely  superseded  the  use  of  the  latter.11  Indeed,  pat- 
ents are  never  held  to  be  void  for  want  of  utility,  merely 
because  the  things  covered  by  them  perform  their  func- 
tions but  poorly.12  In  such  cases  no  harm  results  to  the 
public  from  the  exclusive  right,  because  few  will  use  the 
invention,  and  because  those  who  do  use  it  without  per- 
mission, will  seldom  or  never  be  obliged  to  pay  for  that 
use,  anything  beyond  the  small  benefit  they  may  really 
have  realized  therefrom.13 

§  80.  Utility  in  a  manufacture,  is  not  negatived  by  the 
fact  that  it  has  no  function  except  to  decorate  the  object  to 

8  Wheeler  v.  Reaper  Co.,  10  "  Railway  Co.  v.  Sayles,  97 
Blatch.  189,  1872;  Mergenthaler  U.  S.  559,  1878;  Poppenhusen  v. 
Co.  v.  Press  Pub.  Co.,  57  F.  R.  Comb  Co.,  2  Fisher,  72,  1858; 
505,  1893;  Crown  Cork  &  Seal  Co.  McComb  v.  Ernest,  1  Woods,  203, 
v.   Aluminum   Stopper   Co.,    108  1871. 

F.  R.  848,  1901.  12  Vance  v.  Campbell,  1  Fisher, 

9  Seymour  v.  Osborne,  11  Wal-  485,  1859;  Conover  v.  Roach,  4 
lace,  516,  1870;  Shaw  v.  Lead  Co.,      Fisher,  16,  1857. 

11  F.  R.  715,  1882.  13  Gibbs  v.  Hoefner,  19  F.  R. 

10  Bell  v.  Daniels,  1  Fisher,  375,      324,  1884. 
1858. 


KM)  UTILITY  [CHAP.    IV. 

which  ii  is  designed  to  be  attached.14  In  such  caBe  utility- 
resides  in  beauty.  Whatever  is  beautiful  is  useful,  because 
beauty  gives  pleasure,  and  pleasure  is  a  kind  of  happiness, 
and  happiness  is  a  kind  of  utility. 

§  81.  Utility  is  negatived  if  the  function  performed  by 
an  invention  is  injurious  to  the  morals,  the  health,  or  the 
good  order  of  society." '  An  invention  to  improve  the  art 
of  forgery,  or  one  to  facilitate  the  spread  of  a  contagious 
disease,  or  one  to  render  air  or  water  intoxicating,  would 
of  course  be  unpatentable  for  want  of  utility.  The  more 
completely  such  an  invention  could  perform  its  function, 
the  more  objectionable  it  would  be  in  this  respect.  But 
utility  is  not  negatived  by  the  fact  that  the  article  covered 
by  a  patent  is  an  imitation  of  a  natural  substance,16  except 
where  the  imitation  is  a  fraudulent  counterfeit.17 

§  82.  An  important  question  relevant  to  utility  in  this 
aspect,  may  hereafter  arise  and  call  for  judicial  decision. 
It  is  perhaps  true,  for  example,  that  the  invention  of 
Colt's  revolver  was  injurious  to  the  morals,  and  injurious 
to  the  health,  and  injurious  to  the  good  order  of  society. 
That  instrument  of  death  may  have  been  injurious  to 
morals,  in  tending  to  tempt  and  to  promote  the  gratifica- 
tion of  private  revenge.  It  may  have  been  injurious  to 
health,  in  that  it  is  very  liable  to  accidental  discharge,  and 
to  thereby  cause  wounds,  and  even  homicide.  It  may  also 
have  been  injurious  to  good  order,  especially  in  the  newer 
parts  of  the  country,  because  it  facilitates  and  increases 
private  warfare  among  frontiersmen.    On  the  other  hand, 

14  Magic  Ruffle  Co.  v.  Douglas,  902,  1897;  Schultze  v.  Holtz,  82 
2  Fisher,  330,  1863.  F.  R.  448,  1897. 

15  Bedford  v.  Hunt,  1  Mason,  16  In  re  Corbin  and  Martlett,  1 
301,  1817;  National  Device  Co.  v.  McArthur's  Patent  Cases,  521, 
Lloyd,  40  F.  R.  89, 1889 ;  Reliance  1857. 

Novelty  Co.  v.  Dworzek,  80  F.  R.  17  Rickard  v.  DuBon,  103  F.  R. 

868,  1900. 


CHAP.    IV.]  UTILITY  101 

the  revolver,  by  furnishing  a  ready  means  of  self-defense, 
may  sometimes  have  prompted  morals  and  health  and 
good  order.  By  what  tests,  therefore,  is  utility  to  be 
determined  in  such  cases?  Is  it  to  be  done  by  balancing 
the  good  functions  with  the  evil  functions?  Or  is  every- 
thing useful  within  the  meaning  of  the  law,  if  it  is  used, 
or  is  designed  and  adapted  to  be  used,  to  accomplish  a 
good  result,  though  in  fact  it  is  oftener  used,  or  is  as  well 
or  even  better  adapted  to  be  used,  to  accomplish  a  bad  one? 
Or  is  utility  negatived  by  the  mere  fact  that  the  thing  in 
question  is  sometimes  injurious  to  morals,  or  to  health, 
or  to  good  order?  The  third  hypothesis  cannot  stand, 
because  if  it  could,  it  would  be  fatal  to  patents  for  steam- 
engines,  dynamos,  electric  railroads,  and  indeed  many  of 
the  noblest  inventions  of  the  nineteenth  century.  The 
first  hypothesis  cannot  stand,  because  if  it  could  it  would 
make  the  validity  of  the  patents  to  depend  on  a  question 
of  fact,  to  which  it  would  often  be  impossible  to  give  a 
reliable  answer.  The  second  hypothesis  is  the  only  one 
which  is  consistent  with  the  reason  of  the  case,  and  with 
the  practical  construction  which  the  courts  have  given  to 
the  statutory  requirement  of  utility.18 

§  83.  Another  question  revelant  to  utility  of  function 
will  sooner  or  later  demand  the  attention  of  counsel  and  of 
courts.  A  particular  invention  may  invariably  perform 
one  specific  function,  which  function  is  deemed  good  in 
some  quarters,  and  in  other  quarters  is  thought  to  be  bad. 
The  function  performed  by  a  newly  invented  smoking- 
pipe,  would  be  thought  by  many  persons  to  be  only  evil, 
and  that  continually:  would  be  deemed  by  many  moral- 
ists to  be  injurious  to  the  morals,  and  by  many  physi- 
cians to  be  injurious  to  the  health  of  the  people.    On  the 

^Fuller  v.  Berger,  120  F.  R.  Novelty  Co.,  230  F.  R.  463, 
275,     1903;    Mills     v.     Industry      1916. 


102  ITIUVY  [CHAP.    IV. 

other  hand,  there  are  many  other  persons  who  would  re- 
gard such  an  invention  as  truly  useful.  Personal  opinion 
cannot  control  the  decision  of  such  a  question,  for  if  it 
could  there  would  be  no  stability  to  the  jurisprudence  of 
the  subject.  Nor  ought  former  custom  to  be  the  criterion, 
for  if  it  were,  each  age  would  be  hampered  by  a  prior  and 
lower  civilization.  It  seems,  therefore,  that  in  such  cases 
of  divided  personal  opinion  on  ethical  questions,  the  only 
criterion  of  decision  is  the  average  public  sentiment  of 
the  time  when  such  a  question  arises.19  Accordingly,  the 
courts  at  present  uphold  patents  wrhich  relate  to  tobacco, 
and  will  probably  always  sustain  the  utility  of  inventions 
which  perform  functions  that  average  public  sentiment 
is  willing  to  have  performed. 

§  84.  Utility  is  negatived  by  the  fact  that  the  patented 
process  or  thing  is  injurious  to  the  thing  to  which  it  is  ap- 
plicable,20 and  also  by  the  fact  that  the  function  performed 
by  the  patented  part  of  a  machine,  though  good  in  itself, 
is  injurious  to  the  utility  of  the  machine  as  a  whole.21 
The  first  of  these  points  is  well  illustrated  by  the  first  case 
cited  in  this  section :  a  case  based  on  a  patent  for  a  process 
of  treating  leather  to  an  application  of  fat  liquor.  The 
second  point  is  equally  well  illustrated  by  the  second  case : 
a  case  based  on  a  patent  for  a  locomotive  spark  arrester. 
To  arrest  sparks  is  in  itself  a  good  thing  to  do,  but  where  it 
must  be  done  in  such  a  way  as  to  stop  or  seriously  retard 
the  locomotive,  it  is  not  desirable  to  attempt  it.  There- 
fore a  device  which  would  arrest  sparks,  but  only  at  the  ex- 
pense of  retarding  the  locomotive,  from  the  smoke-pipe  of 
which  they  issued,  was  rightly  held  to  be  wanting  in  utility. 

19  Pope  Mfg.  Co.  v.  Gormully,  21  Wilton  v.  Railroad  Co.,  1 
144  U.  S.  233,  1892.  Brightley's  Federal  Digest,  618, 

20  Klein  v.  Russell,  19  Wallace,  1849. 
433,  1873. 


CHAP.    IV.] 


UTILITY 


103 


§  85.  A  patent  is  prima  facie  evidence  of  utility,22  and 
doubts  relevant  to  the  question  should  be  resolved  against 
infringers,23  because  it  is  improbable  that  men  will  render 
themselves  liable  to  actions  for  infringement,  unless  in- 
fringement is  useful. 24  In  fact  if  the  defendant  has  adopted 
the  distinctive  features  of  a  patented  device  he  is  estopped 
to  deny  its  utility.25 


-'-  Vance  v.  Campbell,  1  Fisher, 
483,  1859;  Crown  Cork  &  Seal 
Co.  v.  Aluminum  Stopper  Co.,  108 
F.  R.  848,  1901;  Kennicott  Co.  v. 
Holt  Ice  &  Cold  Storage  Co.,  230 
F.  R.  157,  1915. 

23  Western  Electric  Co.  v.  La 
Rue,  139  U.  S.  608, 1891;  Whitney 
v.  Mowry,  4  Fisher,  215,  1870. 

24  Lehnbeuter  v.  Holthaus,  105 
U.  S.  94,  1881;  Candy  v.  Belting 
Co.,  143  U.  S.  595,  1892;  La  Rue 


v.  Electric  Co.,  31  F.  R.  82,  1887; 
Westinghouse  Electric  &  Mfg. 
Co.  v.  Beacon  Lamp  Co.,  95  F.  R. 
464, 1899;  Goss  Printing-Press  Co. 
v.  Scott,  108  F.  R.  258,  1901; 
Grever  v.  United  States  Hoffman 
Co.,  202  F.  R.  923,  1913. 

25  F.  D.  Cummer  &  Son  Co.  v. 
Atlas  Dryer  Co.,  193  F.  R.  993, 
1912;  Boyce  v.  Stewart-Warner 
Speedometer  Corporation,  220 
F.  R.  118,  1914. 


CHAPTER  V 


ABANDONMENT 


8G.  The  several  sorts  of  abandon- 
ment. 

87.  Abandonment  of  inventions. 

88.  Actual   abandonment   of   in- 

ventions. 

Actual  abandonment  by  ex- 
press declaration. 

Actual  abandonment  by  for- 
mal disclaimer. 
91.  Actual   abandonment   result- 
ing from  laches  before  ap- 
plication. 

Actual  abandonment  result- 
ing from  laches  after  ap- 
plication and  before  issue  of 
letters  patent. 

Constructive  abandonment 
before  application. 

"Public  use,"  defined  and  de- 
lineated. 

Experimental  use. 

"On  sale,"  delineated  and  de- 
fined. 

Sale  of  inchoate  right  to  a 
patent. 
98.  Degree     of     identity    neces- 


S<> 


90 


92 


93. 

94. 

95. 
96. 

97. 


sarily  involved  between  the 
thing  constructively  aban- 
doned and  the  thing  pat- 
ented. 
Making,  works  no  construc- 
tive abandonment. 

Public  knowledge,  works  no 
constructive  abandonment. 

Public  use  or  sale  in  a  foreign 
country. 

Constructive  abandonment 
after  application,  and  be- 
fore issue  of  letters  patent. 

Rules  of  constructive  aban- 
donment are  inflexible. 
104*7.  Constructive  abandonment 
in  four  new  classes  of  cases. 

Surrender  of  letters  patent. 

Abandonment  of  invention 
after  letters  patent,  un- 
known to  the  law. 

Acquiescence   in   unlicensed 
use  of  patented  invention. 
108.  Questions   of   abandonment 
are  questions  of  fact. 


99 


100 


101 


103. 


104. 


105 
106 


107. 


§  86.  An  inventor  may  abandon  an  unsuccessful  en- 
deavor to  make  an  invention;  or  having  made  an  inven- 
tion, he  may  abandon  it  to  the  public;  or  having  made  an 
invention  and  having  applied  for  a  patent  thereon,  he 
may  abandon  that  application  with  or  without  abandon- 
104 


CHAP.    V.]  ABANDONMENT  105 

ing  that  invention.  Transactions  of  the  first  sort  are  com- 
monly called  unsuccessful  abandoned  experiments.  They 
confer  no  rights  upon  those  who  make  them,  and  they 
affect  no  rights  of  any  other  person.1  Transactions  of 
the  third  sort  are  treated  in  the  chapter  on  applications; 
the  sixth  chapter  of  this  book.  Transactions  of  the  second 
sort  require  treatment  in  respect  that  they  are  inventions ; 
and  also  require  separate  treatment  in  respect  that  they 
are  abandoned.  Treatment  of  the  first  sort  takes  no  ac- 
count of  the  fact  of  abandonment,  because  abandoned 
inventions  have  the  same  effect  on  the  rights  of  subsequent 
inventors  that  they  would  have  if  they  had  not  been 
abandoned.2  That  subject,  therefore,  does  not  belong  to 
this  chapter.  It  is  treated  in  the  chapters  on  invention 
and  letters  patent,  where  the  state  of  the  art  is  a  very 
important  factor  in  the  discussion ;  and  also  in  the  chapter 
on  novelty,  where  anticipation  is  the  point  of  inquiry. 
Treatment  of  the  second  sort  indicated  above,  is  the 
special  function  and  scope  of  this  chapter.  x\bandoned 
inventions  are  here  considered  with  regard  to  the  effect 
abandonment  of  them  has  upon  the  rights  of  their  invent- 
ors, and  with  regard  to  the  rules  by  means  of  which  aban- 
donment is  to  be  affirmed  or  denied  in  particular  cases. 

§  87.  Abandonment  of  an  invention  may  be  actual,  or 
it  may  be  constructive.  It  is  actual  when  it  is  the  result  of 
intention.3  It  is  constructive  when  it  is  the  result  of  some 
statute  which  operates  regardless  of  the  intention  of  the 
inventor.    The  two  sorts  require  and  will  receive  separate 

1  Deering  v.  Harvester  Works,  1890;  Ecaubert  v.  Appleton,  67 

155  U.  S.  302,   1894;  American  F.  R.  922,  1895. 

Bell  Telephone  Co.  v.  Cushman  2  Olds  v.  Brown,  41  F.  R.  703, 

Telephone   Co.,    35   F.    R.    734,  1890. 

1888;  Brush  Electric  Co.  v.  Ft.  3  Mast,  Foos  &  Co.  v.  Dempster 

Wayne  Electric  Co.,  44  F.  R.  284,  Mill  Mfg.  Co.,  82  F.  R.  331,  1897. 


KM)  /U3ANDONMENT  |<  HAP.    V. 

treatment  in  this  chapter,  bill  (hero  arc  some  points  of 
fact  and  of  law  which  apply  equally  to  both.  Either  kind 
may  occur  before  any  application  for  a  patent  is  made,  or 
may  occur  after  such  an  application,  and  before  any  letters 
patent  are  issued.4  So  also,  either  actual  or  constructive 
abandonment  of  an  invention,  is  fatal  to  the  validity  of 
any  patent  that  may  afterward  be  granted  therefor.  The 
inchoate  right  to  a  patent  when  once  abandoned  can  never 
be  resumed;  for  where  gifts  are  once  made  to  the  public, 
they  become  absolute  and  irrevocable.5 

§  88.  Actual  abandonment  of  an  invention  occurs  when- 
ever there  is  an  entire  relinquishment  of  all  expectation  of 
securing  a  patent  therefor,  and  an  accompanying  forma- 
tion of  an  expectation  that  the  invention  will  always  be 
free  to  the  public.6  Such  a  relinquishment  may  be  shown 
by  direct,  or  by  circumstantial  evidence.7  It  may  be 
proved  by  things  done  or  omitted  by  the  inventor,  or  it 
may  be  proved  by  his  omission  or  delay  to  do  what  the 
law  requires  to  be  done  in  order  to  secure  letters  patent. 
The  burden  of  proof  is  on  the  party  seeking  to  prove  the 
abandonment  and  it  must  be  proven  beyond  a  reasonable 
doubt.8  And  the  fact  which  constitutes  an  actual  abandon- 
ment of  an  invention,  may  have  occurred  within  two  years 
before  the  inventor  endeavored  to  recall  that  abandonment 
by  filing  an  application  for  a  patent  on  that  invention.9 

4  Rifle  &  Cartridge  Co.  v.  Arms  6  Babcock  v.  Degner,  1  McAr- 
Co.,  118  U.  S.  24,  1885.  thur's  Patent  Cases,  616,  1859. 

5  Pennock  v.  Dialogue,  2  Peters,  7  Crown  Cork  &  Seal  Co.  v.  Al- 
1,  1829;  Kendall  v.  Winsor,  21  uminum  Stopper  Co.,  108  F.  R. 
Howard,  328,  1858;  Consolidated  850,  1901. 

Fruit  Jar  Co.  v.  Wright,  94  U.  S.  8  Kellogg  Switchboard  &  S.  Co. 

96,  1876;  Planing  Machine  Co.  v.  v.  International  Telephone  Mfg. 

Keith,  101  U.  S.  484,  1879;  Con-  Co.,  158  F.  R.  104, 1907. 

solidated  Fruit  Jar  Co.  v.  Stamp-  See  Section  108,  post. 

ing  Co.,  27  F.  R.  377,  1886.  9  Mast,  Foos  &  Co.  v.  Dempster 


CHAP.    V.]  ABANDONMENT  107 

§  89.  An  inventor  abandons  his  invention  to  the  public 
when  he  makes  an  express  declaration  to  that  effect.10 
And  a  declaration  that  a  particular  invention  is  open  to 
anybody,  is  a  declaration  of  abandonment  of  any  special 
right  thereto.11 

§  90.  So  also  an  inventor  will  be  held  to  abandon  a 
particular  invention,  when  he  formally  disclaims  it  in  an 
application  for  a  patent  for  some  other  invention; I2  and 
where  he  cancels  from  an  application,  a  claim  for  that  in- 
vention, and  substitutes  no  other  claim  for  the  same  in- 
vention, before  his  patent  is  issued;  13  and  also  when  he 
formally  disclaims  a  particular  invention  or  claim,  in  a 
separate  paper  filed  for  that  purpose.  The  Supreme 
Court  decided  in  1854,  that  no  abandonment  results  from 
the  mere  fact  that  the  inventor  described  the  invention 
in  an  application  for  a  patent,  without  either  claiming  or 
disclaiming  the  same.14  When  the  cited  case  was  tried 
in  the  court  below,  the  judge  charged  the  jury  "That  a 
description,  by  the  applicant  for  a  patent,  of  a  machine, 
or  a  part  of  a  machine,  in  his  specification,  unaccompanied 
by  a  notice  that  he  has  rights  in  it  as  an  inventor,  or  that 
he  desires  to  secure  title  to  it  as  a  patentee,  is  a  dedication 
of  it  to  the  public."    But  when  the  case  reached  the  Su- 

Mill  Mfg.  Co.,  82  F.  R.  331,  1897;  13  Yale  Lock  Co.  v.  Berkshire 

Warren  Bros.  v.  City  of  Owosso,  Bank,  135  U.  S.  403,  1890;  Pitts- 

166  F.  R.  309,  1909.  burgh  Reduction  Co.  v.  Cowles 

"  Kendall  v.  Winsor,  21  How-  Electric    Co.,    55    F.    R.    320, 

ard,  328,  1858;  Rifle  &  Cartridge  1893. 

Co.  v.  Arms  Co.,  118  U.  S.  24,  "Battin  v.  Taggert,  17  How- 

1885.  ard,  83,  1854;  also  Kinnear  Mfg. 

11  Westinghouse  Electric  &  Co.  v.  Wilson,  142  F.  R.  970, 
Mfg.  Co.  v.  Saranac  Lake  Electric  1905;  Victor  Talking  Machine 
Light  Co.,  108  F.  R.  224,  1901,  Co.  v.  Am.  Graphophone  Co.,  145 
and  113  F.  R.  885,  1902.  F.  R.  350,  1906;  Victor  Talking 

12  Leggett  v.  Avery,  101  U.  S.  Machine  Co.  v.  Duplex  Phono- 
259,  1879.  graph  Co.,  177  F.  R.  248,  1909. 


I  OS  ABANDONMENT  fcHAP.   V. 

preme  ( Jourt,  that  instruction  was  decided  t<>  be  erroneous, 

and  a  new  trial  was  therefore  awarded.  The  paramount 
precedent  thus  established  lias  been  followed  by  the  Su- 
preme Court,  in  a  recent  case,  by  holding  that  a  particular 
combination,  which  was  described  hi  an  original  patent, 
but  neither  claimed  nor  disclaimed  therein,  was  lawfully 
claimed  in  a  reissue  of  that  patent.15  This  holding  con- 
stituted a  decision  that  no  abandonment  results  from  the 
mere  fact  that  the  inventor  described  the  invention  in  an 
application  for  a  patent,  without  either  claiming  or  dis- 
claiming the  same;  for  the  Supreme  Court  has  always  held 
that  an  abandonment  of  a  right  to  a  patent  on  a  par- 
ticular invention,  whenever  it  occurs,  is  absolute  and  ir- 
revocable.16 

§  91.  Abandonment  is  also  proved  by  evidence  that  the 
inventor  is  chargeable  with  laches  or  lack  of  diligence, 
relevant  to  applying  for  a  patent.17  Long  delay  consti- 
tutes laches,  unless  there  was  some  reason  which  rendered 
that  delay  consistent  with  an  expectation  to  finally  secure 
a  patent.18  Extreme  poverty  of  the  inventor  is  such  a 
reason ; 19  but  poverty  which  was  not  sufficient  to  prevent 
the  inventor  from  securing  patents  on  other  inventions,20 

"  Topliff  v.  Topliff,  145  U.  S.  1904;  International  Tel.  Mfg.  Co. 

165,  1892.  v.  Kellogg  S.  B.  &  S.  Co.,  171 

16  Pennock  v.  Dialogue,  2  Peters,  F.  R.  651,  1909;  Curtain  Supply 
1,  1829;  Kendall  v.  Winsor,  21  Co.  v.  National  Lock  Washer  Co., 
Howard,  328,  1858;  Consolidated  174  F.  R.  45,  1909. 

Fruit  Jar  Co.  v.  Wright,  94  U.  S.  19  Smith    v.    Dental    Vulcanite 

96,  1876;  Planing  Machine  Co.  v.  Co.,  93  U.  S.  491,  1876;  Celluloid 

Keith,  101  U.  S.  484,  1879.  Mfg.  Co.  v.  Crofut,  24  F.  R.  796, 

17  Consolidated  Fruit  Jar  Co.  v.  1885. 

Wright,  94  U.  S.  96,  1876;  Craver  2°  Rifle  &  Cartridge  Co.  v.  Arms 
v.  Weyhrich,  31  F.  R.  607,  1887;  Co.,  118  U.  S.  24,  1885;  Wicker- 
Wright  v.  Postel,  44  F.  R.  352,  sham    v.    Singer,    1    McArthur's 
1890.  Patent  Cases,  689,  1859. 
"  Eck  v.  Kutz,  132  F.  R.  758, 


CHAP.    V.]  ABANDONMENT  109 

or  from  spending  money  for  an  education,21  is  not  such  a 
reason.  The  fact  that  during  all,  or  during  much  of  the 
delay  the  inventor  was  within  the  rebellious  Southern  Con- 
federacy, and  therefore  unable  to  apply  for  a  United  States 
patent,  has  also  been  repeatedly  held  to  be  such  a  reason.22 
Mental  disorder  which  was  great  enough  to  generally 
incapacitate  the  inventor  for  business  during  the  time  of 
the  delay,  is  also  such  a  fact  as  will  negative  laches,23 
and  physical  disorder  ought,  under  the  same  circumstances, 
to  have  the  same  effect.  Also  where  the  inventor's  work- 
ing hours  were  compelling  and  he  was  consequently 
unable  to  readily  confer  with  his  solicitor,  but  in  spite  of 
which  he  made  his  best  efforts,  he  is  not  chargeable  with 
lack  of  diligence.21  In  short,  the  entire  question  is  one  of 
fact  in  the  particular  case  and  the  circumstances  surround- 
ing the  inventor  must  always  be  taken  into  account.25 

Neither  can  laches  be  predicated  of  any  delay  caused 
by  absorbing  misfortune,26  nor  of  any  neglect  of  which 
the  patent  solicitor  was  guilty,27  nor  of  any  delay  which 
was  caused  by  the  experiments  of  the  inventor  in  making 
or  perfecting  his  invention.28  The  latter  proposition, 
however,  does  not  go  to  the  extent  of  permitting  the  in- 
ventor to  wait  until  everything  in  the  nature  of  an  acces- 
sory improvement  that  makes  the  machine  commercially 

21  Craver  v.  Weyhrich,  31  F.  R.  See  Section  108,  post. 

607,  1887.  26  Beedle  v.  Bennett,  122  U.  S. 

22  Johnsen  v.  Fassman,  1  Woods,      76,  1886. 

142,   1871;  Knox  v.  Loweree,   1  27  Birdsall  v.  McDonald,  1  Bann. 

Bann.  &  Ard.  589,  1874.  &    Ard.    165,    1874;    Howes    v. 

23  Ballard  v.  Pittsburg,  12  F.  R.  McNeal,  3  Bann.  &  Ard.  376, 
784,  1882.  1878. 

24Courson  v.  O'Connor,  227  28  Agawan  Co.  v.  Jordan,  7  Wal- 
F.  R.  890,  1915.  lace,  583,  1868;  Von  Schmidt  v. 

2*  Courson    v.  O'Connor,    227      Bowers,  80  F.  R.  143,  1897. 
F.  R.  890,  1915. 


110  ABANDONMENT  [CHAP.    V. 

better  has  been  perfected.  When  the  inventor  hasgraspc<l 
the  idea  and  put  it  into  mechanical  form,  lie  must  be  dili- 
gent in  making  his  application.29  As  between  two  in- 
ventors the  question  is  not  one  of  relative  diligence  but  it 
is  a  question  of  the  actual  diligence  of  the  owner  of  the 
patent  in  suit  without  reference  to  the  degree  of  diligence 
practiced  by  the  alleged  prior  inventor,  so  that  if  the 
former  is  the  prior  inventor  and  has  used  proper  diligence 
he  is  entitled  to  the  patent.30  Nor  does  delay  constitute 
laches  when  it  was  caused  by  the  fact  that  the  invention 
could  only  be  used  in  connection  with  one  covered  by 
another  patent,  and  by  the  fact  that  the  inventor  failed  to 
make  any  arrangement  with  the  owner  of  that  patent  for 
the  joint  use  of  the  two  inventions.31  If  under  such  cir- 
cumstances the  inventor  waits  till  the  older  patent  expires 
before  securing  his  patent,  his  delay  is  amply  accounted 
for  by  his  desire  to  enjoy  for  the  full  statutory  term  of  a 
patent  the  practically  exclusive  right  to  his  invention. 
To  predicate  abandonment  of  delay  suffered  for  such  a 
purpose  would  be  logically  impossible. 

But  a  delay  of  years,  between  reduction  to  practice  and 
filing  an  application  for  a  patent,  which  is  taken  for  the 
purpose  of  profiting,  first  from  secrecy,  and  finally  from  a 
patented  monopoly,  is  a  delay  which  constitutes  actual 
abandonment,  even  if  the  inventor  intended  to  apply  for 
a  patent,  when  he  could  maintain  secrecy  no  longer.32 

§  92.  Abandonment  is  also  established  by  evidence  that 
an  inventor  is  chargeable  with  laches  relevant  to  prosecut- 

29  Universal  Adding  Machine  31  Webster  v.  New  Brunswick 
Co.  v.  Comptograph  Co.,  146  Carpet  Co.,  1  Bann.  &  Ard.  84, 
F.  R.  981,  1906.  1874. 

30  Continental  Rubber  Works  32  In  re  Mower,  15  App.  D.  C. 
v.  Single  Tube  Automobile,  etc.,  144,  1899. 

Co.,  178  F.  R.  452,  1910. 


CHAP.    V.]  ABANDONMENT  111 

ing  or  renewing  his  application  after  it  has  been  rejected  or 
withdrawn.33  For  example,  where  an  application  for  a  pat- 
ent is  rejected  when  it  ought  to  be  allowed,  and  where  the 
inventor  long  acquiesces  in  that  erroneous  rejection,  sup- 
posing it  to  be  right,  he  cannot,  on  receiving  better  infor- 
mation, renew  his  application  or  file  another,  and  there- 
upon secure  a  valid  patent.34  In  such  a  case  the  desire  of 
the  inventor  to  secure  a  patent  may  never  have  left  him, 
but  there  was  doubtless  a  complete,  though  perhaps  re- 
luctant, relinquishment  of  all  expectation  of  so  doing.  An 
abandonment  of  an  invention  is  not  less  real  because  it 
was  unnecessary.  But  Congress  by  a  special  act  may 
waive  an  abandonment  and  authorize  a  patent  to  issue 
for  the  abandoned  invention.35  And  laches  cannot  be 
predicated  of  any  delay  which  was  incurred  by  an  appli- 
cant as  the  result  of  slowness  of  procedure  in  his  case  in 
the  Patent  Office,  whether  that  slowness  was  due  to  neg- 
lect 36  or  to  routine.37  Nor  can  laches  be  predicated  of  any 
delay  to  take  a  particular  step,  in  prosecuting  an  applica- 
tion, where  that  delay  was  not  longer  than  the  time  al- 
lowed by  the  statute,  or  by  the  rules  of  the  Patent  Office, 
for  that  particular  step  in  such  a  prosecution.38 

§  93.  Constructive  abandonment  of  inventions  prior  to 
applications  for  letters  patent,  is  the  offspring  of  certain 

33  Planing     Machine     Co.     v.         3B  Sayles    v.    Railroad    Co.,    2 
Keith,  101  U.  S.  484, 1879;  Rifle  &      Fisher,  523,  1865. 

Cartridge  Co.  v.  Arms  Co.,  118  37  American  Bell  Telephone  Co. 
U.  S.  22,  1885.  v.  United  States,  68  F.  R.  542, 

34  Marsh   v.    Commissioner,    3      1895. 

Bissell,  321,   1872;  Consolidated  38  Crown  Cork  &  Seal  Co.  v.  Al- 

Fruit  Jar  Co.  v.  Stamping  Co.,  uminum  Stopper  Co.,  108  F.  R. 

27  F.  R.  377,  1886.  852,  1901;  Columbia  Motor  Car 

35  Graham  v.  Johnston,  21  F.  R.  Co.  v.  C.  A.  Duerr  &  Co.,  184 
42,  1884.  F.  R.  893,  1911. 

See  Section  146. 


I  12  ABANDONMENT  [CHAP.    V. 

statutes,  the  earliest  of  which  was  the  Patent  Act  of  1836. M 
Sections  6  and  7  of  that  Act  authorized  the  ( lommissioner 
of  Patents  to  grant  a  patent,  only  where  the  alleged  inven- 
tion had  not  been  in  public  use  or  on  sale  with  the  appli- 
cant's consent  or  allowance,  prior  to  the  application.  Sec- 
tion  15  provided  that  in  suits  for  infringement,  judgment 
should  be  rendered  for  the  defendant  if  he  should  have 
pleaded  and  proved  that  the  thing  patented  had  been  in 
public  use  or  on  sale  with  the  consent  or  allowance  of  the 
patentee  before  his  application  for  a  patent.  Section  7  of 
the  Patent  Act  of  1839  40  provided  that  no  patent  should  be 
held  to  be  invalid  by  reason  of  purchase,  sale,  or  use  of  the 
thing  covered  thereby,  prior  to  the  application  for  a  patent, 
except  on  proof  of  abandonment  of  such  invention  to  the 
public,  or  on  proof  that  such  purchase,  sale,  or  use  had 
been  for  more  than  two  years  prior  to  such  application  for 
a  patent.  This  provision  of  the  Act  of  1839  wras  in  one 
respect  restrictive  of  the  enactments  just  cited  from  the 
statute  of  1836,  and  in  one  respect  it  enlarged  their  opera- 
tion. Its  effect  was  to  amend  those  enactments  in  the 
same  way  that  it  wrould  have  done  if  it  had  inserted  the 
words  "for  more  than  two  years"  in  the  proper  place  in 
their  phraseology,  and  had  also  canceled  the  qualification 
which  related  to  consent  and  allowance.41  This  phrase 
"for  more  than  two  years"  means  earlier  than  two  years,42 
so  that  the  law  which  the  two  statutes  established  on  the 
subject  is  expressed  in  the  following  sentence.  A  patent 
is  void  if  the  invention  covered  thereby  was  in  public  use 
or  on  sale  earlier  than  two  years  before  the  application 
for  that  patent.    And  that  continued  to  be  the  law  of  the 

39  5  Statutes  at  Large,  Ch.  357,  41  Andrews  v.  Hovey,  123  U.  S. 
p.  117.  267,  1887;  124  U.  S.  694,  1887. 

40  5  Statutes  at  Large,  Ch.  80,  42  Consolidated  Fruit  Jar  Co. 
p.  354.  v.  Wright,  94  U.  S.  94,  1876. 


CHAP.    V.|  ABANDONMENT  113 

United  States  on  the  subject,  under  the  Consolidated 
Patent  Act  of  July  8,  1870, 43  and  also  under  the  Revised 
Statutes.44  The  two  years  contemplated  by  this  law  are 
ascertained  by  measuring  backward  from  the  date  of  the 
filing  of  the  application  in  the  Patent  Office;45  but  where 
a  second  or  renewed  application  is  filed  to  take  the  place 
of  another  which  described  and  claimed  the  same  inven- 
tion, and  which  was  withdrawn  or  relinquished  with  intent 
to  file  the  second  application,  the  two  years  are  ascertained 
by  measuring  backward  from  the  date  of  the  filing  of  the 
first  application.46  An  application  which  described  a 
particular  invention,  takes  date  on  the  day  of  its  filing, 
whether  or  not  it  claimed  that  invention  at  that  time.47 

§  94.  What  is  "public  use,"  within  the  meaning  of  the 
statute?  This  question  has  now  received  light  from  a 
sufficient  number  of  decisions,  affirming  or  negativing  the 
fact  of  public  use  in  particular  cases,  to  make  it  possible 
to  deduce  a  nearly  complete  answer  from  judicial  authori- 
ties. 

If  the  inventor  allows  his  invention  to  be  used  by  other 
persons  generally,  either  with  or  without  compensation, 
then  it  will  be  in  public  use  within  the  meaning  of  the 
statute.48  And  the  use  is  public,  which  follows  a  transfer 
of  the  thing  used  from  its  inventor  to  the  user,  without 

43 16   Statutes   at   Large,    Ch.  46  International  Crown  Co.   v. 

230,  p.  198.  Richmond,  30  F.  R.  778,  1887; 

44  Revised  Statutes,  Section  Hayes- Young,  etc.,  Co.  v.  St. 
4886,  29  Statutes  at  Large,  Ch.  Louis  Transit  Co.,  137  F.  R.  80, 
391;  Anderson  v.  Eiler,  46  F.  R.  1905. 

778,  1891;  In  re  Drawbaugh,  67  See  Section  145. 

O.    G.    929,    1894;    Eastman    v.  « Edison   v.   American   Muto- 

Mayor,  etc.,  of  City  of  New  York,  scope     Co.,     110    F.     R.     662, 

134  F.  R.  844,  1904.  1901. 

45  Campbell  v.  New  York,  35  48  Elizabeth  v.  Pavement  Co., 
F.  R.  504,  1888.  97  U.  S.  135,  1877. 


1  II  ABANDONMENT  [CHAP.    V. 

reserving  any  control  over  it,  and  without  expecting  to 
make  any  change  in  it,  or  without  any  restriction.'9 

If  the  inventor  uses  his  i mention  for  profit,  and  not  by 
way  of  experiment,  that  is  a  public  use,00  unless  actual  use 
resulting  in  profit  is  necessary  to  show  the  inventor  how  to 
perfect  his  invention,  and  unless  he  does  perfect  it  in  ac- 
cordance with  the  teachings  of  such  use; 51  but  experimen- 
tal use  becomes  public  use  when  it  extends  further,  either 
in  time,  or  in  number  of  instances,  than  is  reasonably 
required  to  test  the  invention.52  Nor  will  the  fact  that  the 
inventor  is  but  an  employee  in  the  place  where  he  uses 
his  invention,  or  the  fact  that  the  profit  goes  primarily 
to  his  employer,  oust  the  operation  of  this  rule.53 

To  constitute  public  use,  it  is  not  necessary  that  more 
than  one  specimen  of  the  thing  invented  should  have  been 
publicly  used,54  nor  that  more  than  one  person  should  have 
known  of  that  use.55  Nor  is  it  necessary  to  public  use  that 
the  article  used  could  have  been  seen  by  the  public  eye,  if 
the  ordinary  use  of  such  articles  is  veiled  from  view.56 

A  design  is  in  public  use  whenever  any  article  which 
embodies  it,  or  any  picture  of  it,  is  exhibited  for  the  pur- 
pose of  making  its  character  publicly  known. 

§  95.  Experimental  use  is  never  public  use  within  the 

49  Root  v.  Third  Avenue  Rail-  54  Consolidated  Fruit  Jar  Co.  v. 
road  Co.,  146  U.  S.  221,  1892;  Wright,  94  U.  S.  94,  1876;  Jones 
Delemater  v.  Heath,  58  F.  R.  416,  v.  Barker,  11  F.  R.  597,  1882;  Na- 
1893.  tional  Cash  Register  Co.  v.  Amer- 

50  Elizabeth  v.  Pavement  Co.,  ican  Cash  Register  Co.  (contain- 
97  U.  S.  137,  1877;  Jenner  v.  ing  history  of  the  statute),  178 
Bowen,  139  F.  R.  556,  1905.  F.  R.  80,  1910. 

61  Sprague  v.  Mfg.  Co.,  12  F.  R.  55  Egbert    v.    Lippmann,    104 

724,  1882.  U.  S.  336,  1881. 

52  International  Tooth  Crown  58  Egbert  v.  Lippmann,  104 
Co.  v.  Gaylord,  140  U.  S.  63, 1891.  U.    S.    336,    1881;    International 

53  Worley  v.  Tobacco  Co.,  104  Tooth  Crown  Co.  v.  Gaylord,  140 
U.  S.  340,  1881.  U.  S.  58,  1891. 


CHAP.  V.]  ABANDONMENT  115 

meaning  of  the  statute,  if  it  is  conducted  in  good  faith  for 
the  purpose  of  testing  the  qualities  of  the  invention,  and 
for  no  other  purpose  not  naturally  incidental  to  that.57 
In  such  a  case  it  is  immaterial  whether  the  experimental 
use  disclosed  a  necessity  for  improvement,  or  disclosed  no 
such  necessity;  and  it  is  also  immaterial  whether  the  use 
was  conducted  with  secrecy  or  not.  It  may  indeed  have 
been  had  in  the  open  air,  and  have  continued  every  day 
for  several  years,  and  have  been  known  to  hundreds  of 
persons,  and  have  incidentally  inured  to  the  profit  of  the 
user  and  of  the  public,  and  still  not  be  a  public  use,  within 
the  meaning  of  the  statute,  if  the  nature  of  the  invention 
was  such  that  only  long-continued  out-door  use  could 
show  whether  the  invention  possessed  utility,  or  show 
in  what  respects,  if  any,  it  required  to  be  improved.58  In 
the  case  of  a  patented  machine  designed  to  manufacture 
articles  the  inventor  may  make  as  many  articles  as  are 
necessary  to  enable  him  to  observe  and  remedy  the  defects 
in  his  machine,  and  he  is  not  thus  brought  within  the 
statute  merely  because  the  articles  themselves  may  be 
perfect  or  because  he  makes  the  best  possible  use  of  them 
by  selling  them.59 

The  liberal  ideas  which  underlie  the  decision  just  cited 
will  doubtless  be  applied  to  every  variety  of  invention,  as 
occasion  serves,  and  will  be  found  elastic  enough  to  cover 
every  meritorious  case.  Indeed,  Judge  John  Lowell 
went  still  further  in  the  direction  of  liberally  allowing  scope 
to  experimental  use,  and  decided  that  such  use  is  not 

57  Beedle  v.  Bennett,  122  U.  S.  Kellogg  S.  B.  &  S.  Co.,  171  F.  R. 

77,  1886;  Harmon  v.  Struthers,  43  651,  1909. 

F.   R.  443,   1890;  Pacific  Cable  58  Elizabeth  v.  Pavement  Co., 

Railroad  Co.  v.  Butte  City  Ry.  97  U.  S.  134,  1877. 

Co.,  55  F.  R.  765,  1893;  Harmon  59Bryce  Bros.  v.  Seneca  Glass 

v.  Struthers,  57  F.  R.  641,  1893;  Co.,  140  F.  R.  161,  1905. 
International   Tel.    Mfg.    Co.    v. 


ll(i  ABANDONMENT  [CHAP.    V. 

public  use  within  the  meaning  of  the  law,  where,  in  order 
to  test  its  comparative  as  well  as  its  absolute  utility,  and 
in  order  to  convince  others  of  its  merits,  an  inventor 
allows  them  to  use  his  invention  after  he  has  himself  be- 
come satisfied  that  it  is  useful.60 

But  where  the  main  object  of  the  use  was  profit,  and  im- 
provement was  only  an  incidental  aim,  the  use  is  *not 
experimental  in  the  eye  of  the  law;61  though  incidental 
profit  is  not  inconsistent  with  use  being  only  experi- 
mental;62 and  absence  of  profit  is  not  inconsistent  with 
use  being  not  experimental,  but  public.63 

The  use  of  a  minor  invention  in  a  large  machine,  may  be 
a  public  use  thereof,  though  the  use  of  the  machine  as  a 
whole  is  experimental.64 

Evidence  of  the  experimental  character  of  any  use  which 
occurred  earlier  than  two  years  before  the  application  for  a 
patent,  must  be  full,  unequivocal,  and  convincing,  or  it 
cannot  prevail  to  save  that  patent  from  invalidity.65 

Public  use  by  a  stranger,  without  the  knowledge  of  the 
inventor,  more  than  two  years  before  the  inventor  applies 
for  a  patent,  generally  has  the  same  operation  of  construc- 
tive abandonment,  that  public  use  by  the  inventor  himself 
would  have; 66  but  Judge  Wheeler  decided,  that  where 

60  Sinclair  v.  Backus,  5  Baiin.  &  63  Thomson-Houston  Electric 
Ard.  81,  1880.  Co.  v.  Lorain  Steel  Co.,  117  F.  R. 

61  Smith  &  Griggs  Mfg.  Co.  v.      252,  1902. 

Sprague,    123  TJ.   S.   256,    1887;  "Thomson-Houston     Electric 

Penn    Electrical  &  Mfg.  Co.  v.  Co.  v.  Lorain  Steel  Co.,  110  F.  R. 

Conroy,  159  F.  R.  943,  1908;  Star  654,  1901;  117  F.  R.  249,  1902. 

Mfg.   Co.   v.   Crescent  Forge  &  65  Smith  &  Griggs  Mfg.  Co.  v. 

Shovel  Co.,  179  F.  R.  856,  1910.  Sprague,    123  U.   S.   264,    1887; 

62  Westinghouse  Electric  &  Swain  v.  Holyoke  Machine  Co., 
Mfg.  Co.  v.  Saranac  Lake  Elec-  111  F.  R.  408,  1901. 

trie  Light  Co.,  108  F.  R.  230,  68  Andrews  v.  Hovey,  123  U.  S. 
1901;  113  F.  R.  888,  1902.  267,  1887;  124  U.  S.  694,  1887; 


CHAP.    V.]  ABANDONMENT  117 

the  inventor  continued  his  experiments  legitimately,  until 
less  than  two  years  before  he  applied  for  his  patent,  that 
patent  will  not  be  defeated  by  the  fact  that  another  person 
constructed,  and  still  another  used,  his  invention,  without 
his  knowledge,  more  than  two  years  before  the  application 
for  the  patent  was  made.67 

This  holding  has  been  more  or  less  doubted,  but  at  any 
rate  it  is  safe  to  say  that  a  fraudulent,  surreptitious  and 
piratical  use  of  the  invention  by  a  stranger,  taking  place 
before  the  two-year  period,  does  not  operate  to  show  an 
abandonment.  This  doctrine  is  discussed  by  the  Circuit 
Court  of  Appeals  of  the  second  circuit  in  Eastman  v. 
Mayor,  etc.,  of  the  city  of  New  York,68  and  while  it  is  up- 
held on  the  authorities,  its  correctness  is  strongly  doubted 
by  Judge  Coxe  who  delivered  the  opinion,  and  the  "  fraud- 
ulent, surreptitious  and  piratical  use"  is  confined  to  that 
arising  out  of  a  breach  of  trust. 

§  96.  What  is  being  "on  sale,"  within  the  meaning  of 
the  statute?  The  answer  to  this  question  also,  can  now  be 
accurately  delineated  in  nearly  or  quite  all  of  its  bounda- 
ries. 

A  single  instance  of  sale  of  one  specimen  of  the  thing  in- 
vented is  enough  to  constitute  putting  the  invention  on 
sale,68"  and  it  is  immaterial  if  the  purchase  price  is  not  paid 
more  than  two  years  before  the,  application.69  Indeed 
a  device  will  be  on  sale  within  the  meaning  of  the  law,  if  it  is 
offered  for  sale,  whether  any  specimen  of  it  is  actually  sold 
or  not.70    If,  however,  the  nature  of  the  invention  is  such 

Glauber  v.  H.  MueUer  Mfg.  Co.  City  of  New  York,  134  F.  R.  844, 

(reviewing  previous  cases  on  gen-  1904. 

eral  subject  of  prior  public  use),  68<l  Consolidated  Fruit  Jar  Co. 

169  F.  R.  110,  1909.  v.  Wright,  94  U.  S.  94,  1876. 

67  Campbell   v.  New   York,  47  69  Anderson  v.  Munroe,  55  F.  R. 

F.  R.  515,  1891.  405,  1893. 

88  Eastman  v.  Mayor,  etc.,  of  70  Plimpton    v.     Winslow,     14 


118  ABANDONMENT  [CHAP.    V. 

that  the  inventor  is  obliged  to  put  it  into  the  hands  of 
others  for  crucial  experiment,  he  may  sell  specimens  to 
those  others  for  that  purpose,  and  such  a  sale  will  not  be 
obnoxious  to  the  law  now  under  consideration.71  But  if 
the  invention  could  have  been  tested  by  the  inventor  on 
his  own  premises,  as  well  as  by  anyone  there  or  elsewhere, 
then  either  an  absolute  or  a  conditional  sale  of  a  specimen 
of  the  thing  invented,  will  be  putting  the  invention  on 
sale,  unless  there  is  unequivocal  evidence  that  the  sale 
was  made  for  the  purpose  of  experimental  use.72 

Where  an  inventor  furnishes  a  specimen  of  his  invention 
for  use  on  approval,  to  be  paid  for  if  successful,  there  is  an 
instance  of  being  "on  sale"  if  the  use  is  successful  and  the 
specimen  is  paid  for  73;  but  if  the  use  is  unsuccessful  and  is 
abandoned,  there  is  no  instance  presented  of  being  "on 
sale,"  even  if  the  specimen  was  partly  or  wholly  paid  for, 
while  being  constructed.74  A  sale  for  the  purpose  of  test- 
ing the  commercial  merits  of  an  invention,  will  constitute 
being  "on  sale; 75  but  where  a  specimen  of  an  invention  is 
built  or  made  to  order,  it  is  not  "on  sale"  till  it  is  com- 
pleted, delivered,  and  accepted.76    This  proposition  is  of 

F.  R.  921,  1883;  Covert  v.  Covert,  Co.  v.  Newell  Universal  Mill  Co., 

106  F.  R.   188,   1901;  Wende  v.  109  F.   R.   269,    1901;  Win.   B. 

Horine,    225    F.    R.    501,    1915;  Mershon  &  Co.  v.  Bay  City  Box  & 

Burke  Electric  Co.  v.  Independent  Lumber  Co.,  189  F.  R.  741,  1910. 

Tool  Co.,  234  F.  R.  93,  1916.  75  Smith  &  Davis  Mfg.  Co.  v. 

71  Graham    v.    McCormick,    5  Mellon,  58  F.  R.  707,  1893. 
Bann.  &  Ard.  244,  1880;  Graham  78  Campbell  v.  New  York,  36 
v.  Mfg.  Co.,  11  F.  R.  142, 1880.  F.  R.  261,  1888;  National  Cash 

72  Hemy  v.  Soapstone  Co.,  5  Register  Co.  v.  American  Cash 
Bann.  &  Ard.  108,  1880;  De  Register  Co.,  178  F.  R.  79,  1910; 
Lamater  v.  Deeley,  53  F.  R.  380,  McCreery  Engineering  Co.  v. 
1892.  Mass.  Fan  Co.,  195  F.  R.  498, 

73  Craig  v.  Michigan  Lubricator  1912;  Burke  Electric  Co.  v.  In- 
Co.,  72  F.  R.  173,  1896.  dependent  Pneumatic  Tool  Co., 

74  Huntington     Dry-Pulverizer  234  F.  R.  93,  1916. 


CHAP.    V.]  ABANDONMENT  119 

course  all  the  more  true  if  the  acceptance  of  the  specimen 
or  specimens  is  subject  to  approval  by  the  buyer  of  a 
sample  to  be  submitted.77 

§  97.  An  assignment  of  the  inchoate  right  to  an  inven- 
tion, is  not  such  a  sale  as  will  be  obnoxious  to  the  statute 
now  under  explanation.78  So  far  from  furnishing  evidence 
of  abandonment,  the  sale  of  the  inchoate  right  to  a  pat- 
ent indicates  an  expectation  that  such  a  patent  will  be 
obtained,  and  that  right  be  thus  translated  into  a  legal 
title. 

§  98.  Precise  identity  between  the  thing  covered  by  the 
patent,  and  the  thing  which  the  inventor  allowed  to  be  in 
public  use  or  on  sale  more  than  two  years  before  he  ap- 
plied for  that  patent,  is  not  necessary  to  constitute  con- 
structive abandonment  of  the  invention  covered  by  the 
latter.  It  is  enough  if  the  two  devices  are  substantially 
the  same,79  or  if  the  advance  from  one  to  the  other  did  not 
amount  to  invention,80  but  it  is  not  enough  that  the  two 
devices  perform  the  same  function,  and  are  somewhat 
similar  in  construction  and  in  mode  of  operation.81 

§  99.  No  constructive  abandonment  results  from  any 
mere  making  of  a  specimen  of  an  invented  thing  more  than 
two  years  before  the  application  for  a  patent.82  But  where 
an  invention  consists  in  a  process  of  making  a  thing,  the 
making  of  a  specimen  of  that  thing,  by  that  process,  is  a  use 
of  that  process,  and  is  therefore  subject  to  the  rules  which 
govern  using,  and  not  to  that  which  applies  to  making  only. 

77  Burke  Electric  Co.  v.  Inde-  80  International  Tooth  Crown 
pendent  Pneumatic  Tool  Co.,  232  Co.  v.  Gaylord,  140  U.  S.  62, 1891. 
F.  R.  145,  1916.  81  Draper  v.  Wattles,  3  Bann.  & 

78  Elm  City  Co.  v.  Wooster,  6  Ard.  618,  1878. 

Fisher,  452,  1873.  82  Comstock  v.  Sandusky  Seat 

79  Hall  v.  Macneale,  107  U.  S.  Co.,  3  Bann.  &  Ard.  188,  1878; 
90,  1882;  Theberath  v.  Trimming  Campbell  v.  New  York,  36  F.  R. 
Co.,  15  F.  R.  251,  1883.  261,  1888. 


120  ABANDONMENT  [CHAP.    V. 

§  100.  Public  knowledge  of  an  invention,  acquired  with 
the  consent  of  the  inventor,  prior  to  his  application  for  a 
patent,  was  formerly  fatal  to  the  validity  of  any  patent 
granted  for  that  invention.  The  Patent  Act  of  1793  M 
provided  that  to  be  patentable,  a  thing  must  not  have 
been  known  before  the  making  of  an  application  for  a 
patent  thereon.  The  Supreme  Court  construed  that  enact- 
ment to  mean  only  that  the  invention  must  not  have 
been  known  to  the  public  with  the  consent  of  the  in- 
ventor.84 The  Patent  Act  of  1836  repealed  all  prior 
statutes  on  the  subject  of  patents,  and  did  not  provide 
that  any  unfavorable  effect  on  an  inventor's  right  should 
result  from  public  knowledge  of  his  invention,  acquired 
at  any  time  after  its  production  by  him.85  Nor  has  any 
later  statute  made  any  such  provision. 

§  101.  A  public  use  or  a  sale  of  a  specimen  of  a  newly 
invented  thing,  occurring  in  any  foreign  country  after 
its  invention  by  an  applicant  for  an  American  patent,  but 
more  than  two  years  before  his  application  is  made,  will 
not  have  the  same  effect  upon  such  a  patent,  that  it  would 
have  had  if  that  public  use  or  that  sale  had  occurred  in  the 
United  States.  The  language  of  Section  4886  of  the  Re- 
vised Statutes,  contains  no  restriction  as  to  the  country 
wherein  the  public  use  or  the  sale  of  a  newly  invented 
thing,  more  than  two  years  prior  to  an  application  for  a 
patent  thereon,  must  occur,  in  order  to  constitute  con- 
structive abandonment  of  that  invention;  and  it  was  held 
by  one  Circuit  Court,  that  no  such  restriction  exists.86 
But  the  Supreme  Court  reversed  that  decision,  and  de- 
cided that  Sections  4886,  4887,  4920  and  4923  of  the  Re- 

83 1  Statutes  at  Large,  Ch.  11,  85  Elizabeth  v.  Pavement  Co., 

Section  1,  p.  318.  97  U.  S.  136,  1877. 

84Pennock     v.     Dialogue,      2  8«  Gandy    v.    Belting    Co.,    28 

Peters,  18,  1829.  F.  R.  570,  1886. 


CHAP.    V.]  ABANDONMENT  121 

vised  Statutes,  taken  together,  show  that  the  right  of  an 
inventor,  to  obtain  a  United  States  patent,  is  not  lost  by 
reason  of  the  fact  that  his  invention  was  in  public  use  or  on 
sale,  in  some  foreign  country,  more  than  two  years  be- 
fore his  application  for  a  United  States  patent  thereon.87 

§  103.  Constructive  abandonment  of  an  invention, 
after  an  application  for  a  patent  thereon,  necessarily 
results  from  constructive  abandonment  of  that  applica- 
tion, in  certain  classes  of  cases  which  are  explained  in  the 
chapter  on  applications.88  In  still  another  class  of  cases, 
constructive  abandonment  of  an  invention,  after  an 
application  for  a  patent  thereon,  necessarily  results  from  a 
particular  kind  of  constructive  abandonment  of  that 
application,  unless  a  new  application  is  filed  within  a 
certain  time  after  such  abandonment.  That  class  of 
cases  is  the  following:  Where  an  applicant  omits  to  pay 
the  final  fee  within  six  months  from  the  time  at  which 
his  application  was  allowed,  and  notice  thereof  sent  to 
him  or  to  his  agent,  and  where  he  also  omits  to  make  any 
new  application  for  a  patent  on  the  same  invention  within 
two  years  after  such  an  allowance,  he  loses  all  right  to  ob- 
tain a  patent  for  that  invention.89  The  two-year  period 
begins  to  run  from  the  date  of  the  allowance,  whether 
or  not  the  fee  is  paid.90  Only  one  renewal  application  may 
be  made.91 

§  104.  The  statutory  law  relevant  to  constructive  aban- 
donment, resulting  from  a  public  use  or  from  a  sale  of  a 
newly  invented  thing,  more  than  two  years  before  an  ap- 

87  Gandy  v.  Belting  Co.,  143  90  Weston  Electrical  Inst.  Co.  v. 
U.  S.  592,  1892.  Empire  Electrical  Inst.  Co.,  136 

88  Section  147  of  this  book.  F.  R.  599,  1905. 

89  Revised  Statutes,  Section  91  Weston  Electric  Inst.  Co.  v. 
4897.  Empire  Electrical  Inst.  Co.,  131 

F.  R.  90,  1904. 


122  ABANDONMENT  [CHAP.    V. 

plication  for  a  patent ,  is  a  law  which  operates  inflexibly 
upon  all  cases  coining  within  it.  Its  effect  cannot  be 
obviated  by  any  evidence  showing  reasons  for  the  delay, 
however  ample  and  meritorious  those  reasons  may  be.92 
The  rule  of  this  section  doubtless  applies  also  to  the  con- 
structive abandonment  explained  in  the  last. 

§  104a.  Constructive  abandonment  of  inventions  prior 
to  applications  for  letters  patent,  in  two  new  classes  of 
cases,  is  enacted  by  the  Patent  Act  of  1897;  and  in  two 
other  new  classes  of  cases,  by  the  Patent  Act  of  1903. 

The  first  of  these  classes  of  cases  is  confined  to  patents 
applied  for  after  1897.  Constructive  abandonment  of 
any  invention  claimed  in  such  a  patent,  will  be  found  to 
have  occurred,  if  its  inventor  did  not  make  his  applica- 
tion for  that  patent,  until  more  than  two  years  after  some 
person,  not  in  privity  with  him,  received  a  patent  on  the 
same  subject  in  some  country,  or  until  more  than  two 
years  after  that  subject  was  described  in  some  printed 
publication  somewhere.93 

The  second  class  of  cases  is  confined  to  patents  which 
were  applied  for  after  1897,  and  on  or  before  March  3, 1903. 
Constructive  abandonment  of  any  invention  claimed  in 
such  a  patent,  will  be  found  to  have  occurred,  if  its 
inventor  did  not  make  his  application  for  that  patent, 
till  more  than  seven  months  after  he,  or  some  person  in 
privity  with  him,  filed  an  application  for  a  patent  on  the 
same  invention,  in  some  foreign  country,  and  if  a  foreign 
patent  was  granted  on  that  foreign  application.94 

92  Sisson  v.  Gilbert,  9  Blatch.  94  29  Statutes  at  Large,  p.  692, 
189,  1871;  Jenner  v.  Bowen,  139  Ch.  391.  Sections  3  and  8  con- 
F.  R.  556,  1905.  strued  together,  and  with  Section 

93  29  Statutes  at  Large,  p.  692,  1  of  Ch.  1019  of  32  Statutes  at 
Ch.   391.     Sections   1,  3,  and  8  Large. 

construed  together. 


CHAP.    V.]  ABANDONMENT  123 

The  third  class  of  cases  is  confined  to  patents  applied 
for  after  March  3,  1903;  on  processes,  machines,  manu- 
factures, or  compositions  of  matter.  Constructive  aban- 
donment of  any  invention  claimed  in  such  a  patent,  will 
be  found  to  have  occurred,  if  its  inventor  did  not  make 
his  application  for  that  patent,  till  more  than  twelve 
months  after  he,  or  some  person  in  privity  with  him,  filed 
an  application  for  a  patent  on  the  same  invention,  in  some 
foreign  country,  and  if  a  foreign  patent  was  granted  on 
that  foreign  application.95  In  the  computation  of  the 
twelve  months'  period  the  day  of  filing  the  foreign  appli- 
cation is  excluded.96 

The  fourth  class  of  cases  is  confined  to  patents  on  de- 
signs, applied  for  after  March  3, 1903.  Constructive  aban- 
donment of  any  invention  claimed  in  such  a  patent,  will 
be  found  to  have  occurred,  if  its  inventor  did  not  make 
his  application  for  that  patent,  till  more  than  four  months 
after  he,  or  some  person  in  privity  with  him,  filed  an  ap- 
plication for  a  patent  on  the  same  invention,  in  some 
foreign  country,  and  if  a  foreign  patent  was  granted  on 
that  foreign  application.97 

An  application  for  a  patent  in  the  United  Kingdom  of 
Great  Britain  and  Ireland,  is  filed  within  the  meaning  of 
the  law  of  this  section,  at  the  time  of  the  filing  of  a  pro- 
visional specification  in  the  British  Patent  Office,  in  cases 
where  a  provisional  specification  is  filed  in  that  office,  in 
advance  of  the  complete  specification.98 

§  105.  Surrender  of  an  invention  may  be  effected  after 
the  grant  of  letters  patent  therefor,  by  means  of  a  formal 

95  32  Statutes  at  Large,  Part  1,  97  32  Statutes  at  Large,  Part  1, 
p.  1225,  Ch.  1019,  Section  1.  p.  1225,  Ch.  1019,  Section  1. 

96  Hess-Bright  Mfg.  Co.  v.  987n  re  Swinburne,  19  App. 
Standard  Roller  Bearing  Co.,  171  D.  C.  565,  1902. 

F.  R.  114,  1909. 


124  ABANDONMENT  f<  MAP.    V. 

surrender  of  those  letters  patent.  A  proceeding  of  the 
kind  was  mentioned  by  the  Supreme  Court  as  being 
undoubtedly  proper  as  early  as  1832,"  and  an  actual 
surrender  of  the  sort  was  tacitly  approved  by  that  tribunal 
about  twenty  years  later.100 

§  10G.  No  abandonment  of  an  invention  after  the  issue 
of  letters  patent  thereon  has  ever  been  judicially  decided 
to  exist  in  the  United  States.  The  Patent  Act  of  1832101 
provided  that  a  certain  class  of  aliens  might  obtain  United 
States  patents  who  had  theretofore  been  excluded  from 
that  privilege;  but  it  coupled  with  that  provision  an  enact- 
ment that  every  patent  granted  by  virtue  of  that  Act 
should  cease  and  determine  in  case  of  failure  on  the  part 
of  the  patentee  to  introduce  the  invention  into  public 
use  in  the  United  States  within  one  year  from  the  issuing 
of  the  patent,  or  in  case  of  a  discontinuance  of  such  public 
use  for  any  period  of  six  months,  or  in  case  of  failure  on 
the  part  of  the  patentee  to  become  a  citizen  of  the  United 
States.  In  providing  such  a  rule  of  constructive  aban- 
donment for  a  certain  class  of  aliens,  Congress  showed 
that  it  did  not  overlook  the  subject  of  non-user  of  pat- 
ented inventions;  and  in  omitting  to  provide  any  such 
rule  for  citizens  of  the  United  States,  Congress  showed 
that  it  did  not  intend  constructive  abandonment  to  result 
from  non-user  in  their  cases.  Even  as  to  aliens,  the  policy 
of  the  law  upon  the  point  was  soon  changed.  The  Act  of 
1836  repealed  all  former  patent  statutes,  and  did  not  re- 
enact  the  provision  just  cited  from  the  Act  of  1832,  nor 
put  any  corresponding  restrictions  upon  any  class  of 
patentees.    Nor  has  any  later  statute  contained  any  pro- 

99  Grant  v.  Raymond,  6  Peters,  m  4  Statutes  at  Large,  Ch.  203, 
240,  1832.                                            p.  577. 

100  Battin  v.  Taggert,  17  How- 
ard, 74,  1854. 


CHAP.    V.]  ABANDONMENT  125 

vision  of  the  kind.  The  fair  inference  from  this  course 
of  legislation  seems  to  be  that  Congress  does  not  intend 
any  patent  right  to  be  lost  on  any  ground  of  non-user  of 
that  right.  Even  before  Congress  had  thus  indicated  its 
intention  on  the  subject,  Justice  Washington  instructed 
a  jury  that  no  disuser  of  an  invention,  after  it  is  patented, 
can  amount  to  an  abandonment,  so  as  to  deprive  the  pat- 
entee or  his  assignees  of  their  exclusive  right  to  it  for  the 
term  of  the  patent.102  So,  also,  the  Supreme  Court 
has  held  that  no  presumption  arises  against  a  patent, 
from  any  use  of  the  invention  by  the  public  after  the 
patent  is  granted.103  Since  no  abandonment  of  an  in- 
vention, after  it  is  patented,  can  arise  out  of  any  exist- 
ing statute,  nor  be  based  on  any  non-user  by  the  pat- 
entee, or  on  any  user  by  the  public,  we  are  shut  up  to 
the  conclusion  that  no  such  abandonment  is  known  to 
our  laws. 

§  107.  Acquiescence  by  a  patentee  in  unlicensed  use  of 
his  invention  during  the  life  of  the  patent,  has  sometimes 
been  said  or  been  intimated  by  courts  to  amount  to  an 
abandonment  of  the  patent  and  of  the  invention.  Four 
cases  containing  such  statements  or  suggestions  are  to  be 
found  in  the  reports.  In  two  of  them  the  judges  made 
their  observations  on  the  subject,  in  spite  of  their  decisions 
that  no  such  question  was  involved  in  the  pleadings.  In 
the  other  two  cases  the  views  of  the  judges  were  inserted 
in  charges  to  juries,  but  inasmuch  as  the  juries  found  for 
the  respective  plaintiffs,  it  seems  that  there  were  no  facts 
in  the  cases  which  called  for  such  statements  in  the  charges. 
The  opinions  of  the  four  judges  on  the  point  seem,  there- 
fore, to  be  no  more  weighty  than  the  reasons  which  sup- 

102  Gray  v.  James,  1  Peters  C.  C.  320,  1833;  Crown  Cork  &  Seal 
Rep.  403,  1817.  Co.  v.  Aluminum  Stopper  Co.,  108 

103  Shaw  v.   Cooper,   7   Peters,      F.  R.  869,  1901. 


L26  ABANDONMENT  [CHAP.    V. 

port  them.  But  no  reasons  applicable  to  the  subject  of 
abandonment  of  a  patent  are  contained  in  either  of  the 
cases,  though  one  of  them  contains  statements  of  reasons 
adapted  to  support  the  doctrine  of  estoppel.  Nor  do  the 
four  cases  agree  among  themselves  relevant  to  the  char- 
acter or  to  the  quantity  of  acquiescence  needed  to  support 
an  hypothesis  of  abandonment  of  a  patent.  In  Wyeth  v. 
Stone  104  Justice  Story  intimated  that  such  acquiescence 
must  be  without  objection,  and  must  continue  for  a  series 
of  years.  In  Ransom  v.  New  York,105  Judge  Hall  placed 
no  such  limitation  as  the  last  of  these  upon  the  doctrine, 
and  if  he  hinted  at  the  first  of  them  he  hinted  but  vaguely. 
In  Bell  v.  Daniels,106  Judge  Leavitt  said  that  it  would 
require  a  strong  case  to  prove  abandonment  of  a  patent 
actually  granted.  In  Williams  v.  Railroad  Co.,107  Judge 
Wallace  said:  "Neither  does  mere  delay  or  acquiescence 
establish  an  abandonment  or  dedication  of  the  patent. 
There  must  be  an  acquiescence  in  the  appropriation  of 
the  right  of  such  a  character  as  reasonably  to  induce  the 
belief  that  the  owner  intended  to  relinquish  it  to  the  pub- 
lic use."  The  opinions  cited  in  this  section,  so  far  as  they 
disagree  with  the  statutes  and  decisions  cited  in  the  last, 
do  not  agree  in  that  disagreement,  and  they  seem  in- 
sufficient to  outweigh,  or  even  to  modify,  the  doctrine  set 
forth  in  that  section. 

§  108.  Questions  relevant  to  actual  or  to  constructive 
abandonment  of  inventions  are  questions  of  fact;108  and 
every  reasonable  doubt  relevant  to  any  such  question 

104  Wyeth  v.  Stone,  1  Story,  282,  Railroad  Co.,  4  Bann.  &  Ard.  441, 
1840.  1879. 

105  Ransom  v.  New  York,  1  108  Battin  v.  Taggert,  17  How- 
Fisher,  273,  1856.  ard,  84,  1854;  Kendall  v.  Winsor, 

109  Bell  v.  Daniels,  1  Bond,  219,      21  Howard,  330,  1858. 
1858.  See  Section  91. 

107  "Williams  v.  Boston  &  Albany 


CHAP.    V.] 


ABANDONMENT 


127 


should  be  solved  in  favor  of  the  patent,  for  the  law  does 
not  favor  forfeiture.109 


«»  Pitts  v.  Hall,  2  Blatch.  238, 
1851;  McCormick  v.  Seymour,  2 
Blatch.  256,  1851;  Birdsall  v.  Mc- 
Donald, 1  Bann.  &  Ard.  165, 
1874;  Comstock  v.  Sandusky  Seat 
Co.,  3  Bann.  &  Ard.  188,  1878; 
Anderson  v.  Eiler,  46  F.  R.  779, 
1891;  Crown  Cork  &  Seal  Co.  v. 


Aluminum  Stopper  Co.,  108  F.  R. 
850,  1901;  Victor  Talking  Ma- 
chine Co.  v.  Duplex  Phonograph 
Co.,  177  F.  R.  248,  1909;  Inter- 
urban  Ry.  &  Terminal  Co.  v. 
Westinghouse  Electric  &  Mfg. 
Co.,  186  F.  R.  166,  1911. 
See  Section  88. 


CHAPTER  VI 


APPLICATIONS 

109. 

Constituents  of  applications 

130. 

The  examination  by  the  Pat- 

for patents. 

ent  Office. 

110. 

The  petition. 

131. 

Notification  of  rejection. 

111. 

Constituents     of     specifica- 

132. 

Appeals      in      the     Patent 

tions. 

Office. 

112. 

The  preamble. 

133. 

Appeals  to  the  Court  of  Ap- 

113. 

The  general  statement  of  the 

peals   of   the   District   of 

invention. 

Columbia. 

114. 

The  description  of  the  draw- 

134. 

Bills  in  equity  to  compel  the 

ings. 

Commissioner     to    grant 

115. 

The  detailed  description  of 

patents. 

the  invention. 

135. 

Amendments     of      applica- 

116. 

The  claim  or  claims. 

tions. 

117. 

Claims  in  machine  patents. 

136. 

The  foundation  of  the  right 

117a 

.  Methods  of  specifying  parts 

of  amendment. 

in  claims. 

137. 

When    an    applicant    may 

118. 

Claims  in  patents  for  manu- 

amend. 

factures. 

138. 

How     an     applicant     may 

119. 

Claims  in  patents  for  compo- 

amend. 

sitions  of  matter. 

139. 

When    an    applicant    must 

120. 

Claims  in  process  patents. 

amend. 

120a 

.  Claims  in  design  patents. 

140. 

Interferences. 

121. 

The  signatures. 

141. 

Interferences. 

122. 

The  form  of  the  oath. 

141a 

.  Interferences. 

123. 

The  constituents  of  the  oath. 

1416 

.  Interferences. 

124. 

Affirmations. 

141c 

.  Interferences. 

125. 

The  Patent  Office  fees. 

141d 

.  Appeals  in  interferences. 

126. 

Drawings. 

142. 

Decisions    in    interferences 

127. 

Models. 

are  not  conclusive. 

128. 

Specimens   of   compositions 

143. 

Caveats. 

of  matter. 

144. 

Appeals  from  decrees  on  bills 

129. 

Dates  of  applications. 

in  equity. 

129a 

.  The  register  of  Patent  Of- 

145. 

Abandonment    of    applica- 

fice attorneys. 

tions. 

128 

CHAP.    VI.]  APPLICATIONS  129 

146.  Constructive    abandonment  tive  abandonment  of  in- 

of  applications.  ventions. 

147.  Constructive    abandonment      148.  Commissioner's    actions    on 

of    applications    working  prerequisites    to    applica- 

and  not  working  construe-  tions. 

§  109.  An  application  for  a  patent  consists  of  the  fol- 
lowing transactions :  The  deposit  in  the  Patent  Office  of  a 
written  petition  to  the  Commissioner  of  Patents;  the  like 
deposit  of  a  written  specification  of  the  invention;  the  mak- 
ing of  an  oath;  the  payment  of  the  Patent  Office  fee;  and 
in  some  cases  the  deposit  of  a  drawing;  and  in  some  cases 
the  deposit  of  a  model ;  and  in  some  other  cases  the  deposit 
of  specimens.1  Applications  and  proceedings  on  applica- 
tions are  primarily  governed  by  the  provisions  of  the 
Revised  Statutes.  Where  those  provisions  do  not  cover 
a  particular  point,  that  point  is  governed  by  the  rules  of 
the  Patent  Office.2  Every  such  rule,  unless  it  is  inconsist- 
ent with  law,  is  as  authoritative  as  the  Revised  Statutes 
themselves.3 

§  110.  The  petition  is  a  communication,  signed  by  the 
applicant  and  addressed  to  the  Commissioner  of  Patents, 
stating  the  name,  present  nationality,  residence,  and 
present  post  office  address  of  the  petitioner;  and  request- 
ing the  grant  of  a  patent  for  the  invention  therein  desig- 
nated by  name,  and  by  a  reference  to  the  specification  for 
a  full  disclosure  thereof.4  The  petition  must  be  the  peti- 
tion of  the  inventor,  and  not  of  an  assignee  of  the  inventor, 
though  it  may  properly  request  that  the  patent,  when 

1  Revised  Statutes,  Sections  3  United  States  v.  Commissioner 
4888,  4889,  4890,  4891,  4892,  of  Patents,  22  O.  G.  1365,  1882; 
4893,  4933;  Rules  of  Practice  of  United  States  v.  Commissioner  of 
the  United  States  Patent  Office,  Patents,  104  0.  G.  856,  1903; 
revised  Jan.  1,  1916,  Rules  30,  56,  Steinmetz  v.  Allen,  192  U.  S.  543, 
57,  58,  59.  1904. 

2  Revised  Statutes,  Section  483.  4  Patent  Office  Rules  33,  86. 


L30  APPLICATIONS  [CHAP.    \  I. 

granted,  shall  he  granted  to  an  assignee.''  If,  however, 
the  inventor  becomes  insane  or  dies  before  executing  a 
petition,  the  petition  may  be  made  and  signed  by  his 
guardian,  conservator,  or  representative  in  trust  for  his 
estate,  in  case  of  his  insanity;6  or  by  his  executor  or  ad- 
ministrator in  case  of  his  death.7  And  if  the  inventor  was 
not  domiciled  in  the  United  States,  at  the  time  of  his 
death,  the  executor  or  administrator,  duly  authorized 
under  the  law  of  any  foreign  country  to  administer  upon 
his  estate,  and  whose  authority  is  proved  by  a  certificate 
of  a  diplomatic  or  consular  officer  of  the  United  States, 
may  make  and  sign  the  petition.8 

§  111.  The  specification  properly  consists  of  six  parts.9 
1.  The  preamble.  2.  A  general  statement  of  the  nature 
and  object  of  the  invention.  3.  A  brief  description  of  the 
drawings,  if  drawings  are  made.  4.  A  detailed  description 
of  the  invention.  5.  The  claim  or  claims.  6.  The  signature 
of  the  applicant.  Prior  to  the  amendment  of  Section  4888 
of  the  Revised  Statutes  in  1915  two  witnesses  were  re- 
quired, but  that  requirement  was  dispensed  with  by  the 
Act  of  March  3,  1915,  amending  that  section.10 

§  112.  The  preamble  states  the  name,  present  nation- 
ality, residence,  and  present  post  office  address,  of  the 
applicant;  and  where  the  applicant  is  acting  as  representa- 
tive of  an  insane  or  deceased  inventor,  the  preamble  states 
his  name,  and  his  nationality  and  residence  at  the  time 
of  his  making  the  invention,  and  states  also  that  the  ap- 

5  Revised      Statutes,      Section      Ch.  227,  and  as  amended  May  23, 

4895.  1908,  35  Stat.  245. 

6  Revised     Statutes,     Section         8  Revised     Statutes,     Section 

4896,  as  amended,  35  Statutes,  4896,  as  amended,  35  Statutes, 
246.  246. 

7  Revised     Statutes,     Section         9  Patent  Office  Rule  39. 

4896,  and  as  amended  Feb.  28,  10Act  Mar.  3,  1915,  Chap.  94, 

1899,  in  30  Statutes  at  Large,      Section  1,  38  Statutes,  958. 


(HAP.    VI.]  APPLICATIONS  131 

plicant  is  acting  in  his  capacity  as  guardian,  conservator, 
representative  in  trust,  executor,  or  administrator,  as  the 
case  may  be.  The  preamble  also  states  the  title  of  the 
invention,  in  order  to  connect  it  by  name,  with  the  same 
title  in  the  petition. 

§  113.  The  general  statement  of  the  nature  and  object 
of  the  invention  is  a  convenient  mode  of  introducing  the 
detailed  description.  Every  such  statement  should  be 
free  from  any  particularity  or  limitation  which,  if  im- 
ported, by  implication,  into  one  or  more  of  the  claims, 
might  operate  to  reduce  the  area  covered  by  the  patent, 
to  territory  more  narrow  than  the  state  of  the  prior  art 
required. 

§  114.  The  description  of  the  drawings  states  what  each 
figure  is,  but  does  not  state  the  details  of  the  figures;  those 
details  being  passed  over  in  that  description,  to  be  attended 
to  in  the  detailed  description  of  the  invention. 

§  115.  The  detailed  description  of  the  invention  must  be 
full  enough,  and  clear  enough,  and  concise  enough,  and 
exact  enough,  to  enable  any  person  skilled  in  the  art  or  sci- 
ence to  which  it  appertains,  or  with  which  it  is  most  nearly 
connected,  to  make  and  use  the  invention,  if  it  is  a  machine 
or  a  manufacture,  or  to  compound  the  invention,  if  it  is  a 
composition  of  matter,  or  to  perform  the  invention,  if  it  is 
a  process,11  or  to  identify  the  invention,  if  it  is  a  design.  If 
the  description  falls  below  this  standard,  the  patent,  if 
granted,  will  be  void. 12  But  this  standard  may  be  reached, 
in  the  case  of  a  design,  by  a  reference  to  the  drawing  or 
photograph  13  annexed  to  the  specification.    In  the  statute 

11  Revised  Statutes,  Section  13  Dobson  v.  Dornan,  118  U.  S. 
4888;  Bradford  v.  Expanded  Met-  14,  1885;  Anderson  v.  Saint,  46 
al  Co.,  146  F.  R.  984,  1906.  F.  R.  760,  1891. 

12  O'Reilly  v.  Morse,  15  How-  See  Section  174. 
ard,  62,  1853. 


132  APPLICATIONS  [(HAP.    VI. 

by  which  this  standard  is  established,  the  phrase  "any 
person  skilled  in  the  art  or  science"  includes  persons  of 
ordinary  and  fair  information  and  skill  in  the  relevant 
art  or  science;  and  that  phrase  is  not  confined  to  the  most 
eminent  scientists,  or  to  the  most  competent  experts,  hi 
that  science  or  art.14 

The  description,  in  a  case  of  a  manufacture,  and  particu- 
larly in  a  case  of  a  machine,  must  make  constant  reference 
to  the  drawings,  by  means  of  reference  letters  or  reference 
numerals,  incorporated  in  the  description,  and  placed  upon 
the  face  of  the  drawings.15  Numerals  are  every  way  better 
than  letters  for  this  purpose,  and  are  preferred  by  the 
Patent  Office.16  They  are  unlimited  in  number;  instead 
of  being  only  twenty-six.  They  are  distinguishable  from 
each  other  in  sound;  instead  of  being  often  indistinguish- 
able, when  separately  pronounced,  as  several  pairs  of  the 
letters  of  the  alphabet  are.  They  are  always  alike;  instead 
of  being  printed  sometimes  as  Roman  letters  and  some- 
times as  Italics,  and  in  either  event,  sometimes  as  small 
letters,  and  sometimes  as  capitals. 

The  statute  also  says  that  in  case  of  a  machine,  the  ap- 
plicant shall  explain  the  principle  thereof,  and  the  best 
mode  in  which  he  has  contemplated  applying  that  prin- 
ciple, so  as  to  distinguish  it  from  other  inventions.17  These 
provisions  must  be  read  in  the  light  of  their  avowed  object. 
That  object  is  identification.  The  first  provision  cannot 
mean  that  the  inventor  must  infallibly  explain  the  law  of 
nature  which  makes  his  machine  work;  for  if  it  means  that, 
neither  Morse  nor  Bell  complied  with  it  when  describing 
the  telegraph  or  the  telephone,18  and,  indeed,  neither 

14  Tannage  Patent  Co.  v.  Zahn,  17  Revised  Statutes,  Section 
66  F.  R.  989,  1895.                             4888. 

15  Patent  Office  Rule  38.  18  Emerson  Co.  v.  Nimocks,  99 
18  Patent  Office  Rule  38.                 F.  R.  739,  1900;  National  Meter 


CHAP.    VI.]  APPLICATIONS  133 

Morse  nor  Bell  nor  any  man  could  have  done  so.  The 
second  provision  cannot  mean  that  every  inventor  must 
infallibly  judge  which  of  several  forms  of  his  machine  will 
eventually  be  found  to  work  best,  for  if  it  means  that,  it 
requires  what  is  often  impossible:  requires  the  inventor 
to  foresee  the  ultimate  effects  of  new  and  comparatively 
untried  causes.  The  first  provision  means  that  the  es- 
sential distinctive  characteristic  of  the  machine  shall  be 
explained;  19  and  the  second  provision  means  that  the 
inventor  shall  state  the  mode  which  he  contemplates  to 
be  the  best.20  Inasmuch  as  the  validity  of  a  patent  de- 
pends on  the  sufficiency  of  the  description,  the  subject  of 
this  section  is  treated  with  more  detail  in  the  chapter  on 
letters  patent,  the  seventh  of  this  book.  Enough  has  been 
outlined  in  this  connection,  to  show  what  kinds  of  state- 
ments those  descriptions  need  to  contain. 

§  116.  The  claim  or  claims  constitute  a  necessary  part 
of  every  specification.  The  statutory  requirement  in  this 
regard  is,  that  the  applicant  "  shall  particularly  point  out 
and  distinctly  claim  the  part,  improvement,  or  combina- 
tion which  he  claims  as  his  invention."  21  The  practice  of 
the  Patent  Office  has  always  been  to  require  the  claim  or 
claims  to  be  made  in  that  part  of  the  specification  which 
immediately  precedes  the  signatures. 

It  is  a  practice  of  some  solicitors  of  patents  to  write 
claims  in  vague  phraseology,  with  an  idea  that  vagueness 
is  elasticity,  and  that  elasticity  is  excellence.  They  stretch 
their  claims  to  catch  infringers;  and  are  apt  to  stretch  them 

Co.  v.  Thomson  Meter  Co.,  106  432, 1843;  Page  v.  Ferry,  1  Fisher, 
F.  R.  538,  1900.  309,  1857;  Vrooman  v.  Penhallow, 

19  National  Meter  Co.  v.  Thorn-      179  F.  R.  296,  1910. 

son  Meter  Co.,  106  F.  R.  538,  21  Revised     Statutes,     Section 

1900.  4888. 

20  Carver  v.  Mfg.  Co.,  2  Story, 


L34  APPLICATIONS  [chap.   VI. 

to  the  breaking  point,  by  making  them  vague  and  clastic 

enough  to  cover  inventions  in  the  prior  art,  and  to  be  in- 
validated thereby.-"-  It  is  a  practice  of  some  solicitors,  to 
multiply  claims,  with  variant  language.  Thus  they  hope 
to  hit  every  competitor,  with  one  claim  or  another;  or  to 
divert  them  all  from  competition,  by  a  multiplicity  of  ap- 
pearances. But  the  courts  have  frequently  expressed  their 
disapprobation  of  multiplying  claims  unnecessarily,23  and 
such  multiplication  is  dangerous  to  the  validity  of  pat- 
ents.24 

It  is  a  proper  practice  to  make  a  generic  claim  and  also 
a  specific  claim,  in  an  application  for  a  patent  on  a  generic 
invention,  even  where  only  one  species  is  described  in  the 
specification.25  In  such  a  case,  if  the  inventor's  under- 
standing that  his  invention  is  primary,  turns  out  to  be  true, 
both  claims  will  be  valid.  But  if  some  invention  is  after- 
ward discovered  in  the  prior  art,  which  relegates  the  pat- 
ent to  a  secondary  place,  the  specific  claim  may  stand  and 
be  valid,  though  the  generic  claim  is  too  broad  to  be  main- 
tained. 

§  117.  In  a  case  where  the  description  sets  forth  an 
entire  machine,  the  applicant  may  lawfully  make  a  claim 
co-extensive  with  the  description,  if  the  machine  as  a  whole 
possesses  novelty.  But  such  a  claim  ought  seldom  to  be 
the  only  one  in  a  patent;  because,  for  reasons  stated  in  the 
chapter  on  infringement,  it  can,  in  most  cases,  be  readily 
evaded.  The  proper  practice  is  to  fix  upon  the  new  parts, 
or  new  combinations,  which  the  described  machine  con- 

22  Bracewell  v.  Passaic  Print  2a  Hill  v.  Hodge,  12  App.  D.  C. 
Works,  107  F.  R.  473,  1901.  530,  1898;   J.   L.   Owens   Co.   v. 

23  Westinghouse  Air-Brake  Co.  Twin  City  Separator  Co.,  168 
o.  New  York  Air-Brake  Co.,  112  F.  R.  259,  1909;  Ryder  v.  Town- 
F.  R.  431,  1901.  send,  188  F.  R.  792,  1911;  Zitt- 

24  Carlton  v.  Bokee,  17  Wallace,  losen  Mfg.  Co.  v.  Boss,  219  F.  R. 
463,  1873.  887,  1914. 


CHAP.    VI.]  APPLICATIONS  135 

tains,  and  to  make  a  separate  claim  for  each  of  those  parts, 
and  for  each  of  those  combinations.26 

But  one  patent  or  claim  having  been  granted  to  an  in- 
ventor, upon  a  particular  part  or  combination,  as  perform- 
ing particular  functions,  no  valid  claim  or  patent  can  be 
afterward  granted  to  him,  on  the  same  part  or  combina- 
tion, as  performing  a  part  only  of  the  functions  called  for 
by  the  claim  of  the  first  patent.27  And  it  is  advisable  to 
take  out  all  patents,  on  the  same  day,  on  different  com- 
binations of  parts,  some  of  which  are  in  each  of  the  dif- 
ferent combinations.  To  secure  a  particular  part  of  a 
machine,  a  claim  must  specify  that  part;  and  to  secure  a 
particular  combination  of  some  of  the  parts  of  a  machine, 
a  claim  must  specify  all  of  those  parts,  and  the  description 
must  explain  their  joint  mode  of  operation,  and  must 
state  their  joint  function.28 

And  a  part  or  a  combination  may  be  claimed  separately, 
though  it  cannot  do  useful  work  separately  from  the  resi- 
due of  the  machine  or  apparatus  of  which  it  constitutes 
a  part.29  Otherwise  an  infringer  might  take  the  most 
important  part  of  an  invention,  and  by  changing  the 
method  of  adapting  it  to  its  environment,  might  avoid 

*»  Gill  v.  Wells,  22  Wallace,  24,  Co.,  53  F.  R.  920,  1892;  Holloway 

1874;  Adams  v.  Jones,  1  Fisher,  v.  Dow,  54  F.  R.  516, 1893;  Bram- 

530,    1859;    National    Malleable  mer  v.  Schroeder,  106  F.  R.  929, 

Casting   Co.   v.   American   Steel  1901;   Thompson-Houston   Elec- 

Foundries,  182  F.  R.  626,  1910.  trie   Co.   v.   Black    River  Trac- 

27  Miller  v.  Eagle  Co.,  151  U.  S.  tion  Co.,  135  F.  R.  759,   1905; 

199,  1894.  Kenney  Mfg.  Co.  v.  J.  L.  Mott, 

*8  Parks  v.  Booth,  102  U.  S.  102,  Iron  Works,  137  F.  R.  431,  1905; 

1880;  Forbush  v.  Cook,  2  Fisher,  Clark    Blake    &    Razor    Co.    v. 

669,  1857.  Gillette   Safety   Razor  Co.,   194 

29  Hancock    Inspirator    Co.    v.  F.  R.  421,  1912;  National  Malle- 

Jenks,  21  F.  R.  915,  1884;  Rapid  able    Castings  Co.  v.  Americau 

Service  Store  Ry.  Co.  v.Taylor,  43  Steel  Foundries,  182  F.  R.  626, 

F.  R.  251,  1887;  Roberts  v.  Nail  1910. 


136  APPLICATIONS  [CHAP.    VI. 

any  charge  of  infringement.  The  invention  of  a  needle 
with  an  eye  near  the  point,  is  the  one  essential  element  of 
all  sewing  machines.  But  the  possible  mechanisms  for 
operating  such  a  needle  are  many,  and  if  its  inventor  had 
been  obliged  to  make  his  own  mechanism  a  part  of  every 
claim  in  which  his  needle  was  an  element,  his  patent  would 
have  been  destitute  of  value  to  him; 30  though  his  invention 
was  one  of  the  most  valuable  in  the  history  of  mankind. 

It  is  not  necessary,  however,  that  a  claim  specify  all 
the  various  means  shown  in  the  specification  and  drawings 
for  connecting  the  various  parts  of  the  combination,  as  it 
is  to  be  interpreted  to  include  such  connections  of  the 
several  parts  as  are  necessary  to  make  them  operative.300 

§  117a.  A  part  of  a  machine  when  claimed  alone,  may 
be  specified  by  the  use  of  its  name  in  the  claim,  where  no 
other  part  of  the  machine  has  a  similar  name;  but  where  the 
use  of  a  name  alone,  is  not  sufficiently  specific  to  show  what 
part  of  the  machine  is  referred  to,  that  object  can  be  ac- 
complished by  mentioning,  in  the  claim,  the  reference 
letter  or  numeral,  which  is  used  to  indicate  that  part  in 
the  description  and  in  the  drawings.  Such  a  use  of  a 
reference  letter  or  numeral  does  not  necessarily  confine 
the  claim  to  a  part  having  all  the  characteristics  of  the 
part  which,  in  the  drawings,  is  indicated  by  the  letter  or 
numeral;  s°b  because  a  claim  which  expressly  covers  a  par- 
ticular device,  impliedly  covers  any  equivalent  of  that 
device;  and  other  devices  will  be  held  to  be  equivalent 

30  Deering  v.  Winona  Harvester  3°6  Campbell  Printing-Press  Co. 

Works,    155    U.    S.    302,    1894;  v.  Marden,  64  F.  R.  785,  1894; 

Chambers-Bering-Quinlan  Co.  v.  National     Hollow     Brake-Beam 

Faries,  75  F.  R.  663,  1896.  Co.    v.    Interchangeable    Brake- 

3oa  Duncan  v.  Stockham,   204  Beam     Co.,     106    F.     R.     715, 

F.  R.  781,  1912;  Jones  v.  Evans,  1901. 
215  F.  R.  586,  1914. 


CHAP.    VI.  1  APPLICATIONS  I.'!, 

or  not  equivalent,  by  means  of  certain  tests,  which  are 
explained  in  the  chapter  on  infringement,  and  which  are 
quite  foreign  to  the  question  whether  a  particular  device 
is  designated  in  a  claim  by  a  reference  letter  or  numeral, 
or  by  a  name  alone,  or  in  some  other  way. 

It  is  true  that  where  the  particular  characteristics  of 
the  parts  of  the  combination  shown  in  the  drawings  of  a 
patent,  are  all  that  differentiate  it  from  the  prior  art; 
and  where  those  parts  are  specified  in  an  amended  claim 
by  reference  letters  or  numerals,  in  pursuance  of  a  rejec- 
tion by  the  Patent  Office  of  a  prior  claim  which  was  broad 
enough  to  cover  the  prior  art;  the  amended  claim  is  limited 
to  a  combination  of  parts  having  those  particular  char- 
acteristics; for  if  not  so  restricted,  the  effect  would  be  to 
make  the  claim  co-extensive  with  what  the  Patent  Office 
rejected.31  But  the  same  thing  is  true,  in  an  otherwise 
similar  case,  where  the  parts  of  the  combination  are  speci- 
fied, in  an  amended  claim,  by  names  alone,  or  in  any 
other  way.32  The  breadth  or  the  narrowness  of  a  claim 
as  the  case  may  be,  does  not  depend  upon  any  artificial 
rule  of  interpretation;33  and  to  narrow  a  broad  invention 
by  reference  letters  or  numerals  alone,  would  be  to  frame 
and  enforce  such  a  rule. 

Where  some  of  the  parts  of  a  combination  operate 
therein  to  give  motion  to  other  parts,  which  do  the  final 
work  of  the  combination,  it  is  proper  to  specify  the  former 
by  the  use  of  such  terms  as  "means,"  " mechanism," 
or  "devices  "  for  giving  that  motion,34  except  when  these 

31  Knapp  v.  Morss,  150  U.  S.  33  Topliff  v.  Topliff,  145  U.  S. 

228, 1893;  Lehigh  Valley  R.  R.  Co.  171,  1892. 

v.  Kearney,  158  U.  S.  469,  1895.  34  Brush    Electric    Co.    v.    Ft. 

32McCormickHarvestingMach.  Wayne   Electric    Light   Co.,    40 

Co.  v.  C.  Aultman  &  Co.,  69  F.  R.  F.  R.  833,  1889;  Brush  Electric 

393,  1895.  Co.  v.  Western  Electric  Co.,  43 


L38  APPLICATIONS  [CHAP.    VI. 

terms  are  applied  to  as  elemenl  <>r  pari  which  consti- 
tutes the  essence  of  the  invent  ion.  If  they  are  used  under 
such  circumstances  the  claim  will  be  regarded  as  func- 
tional.36 But  such  general  language  will  not  include'  all 
means,  mechanism,  or  devices  which  can  perform  thai 
function,  but  only  those  which  are  shown  in  the  patent, 
and  their  equivalents.86  And  in  this  case  also,  the  ques- 
tion whether  other  means,  mechanism,  or  devices  are 
equivalents  of  those  showm  in  the  patent,  will  be  deter- 
mined by  the  established  rules  on  that  subject,  rather  than 
by  any  apparent  precision  or  elasticity  of  the  language 
used  in  the  claims  to  designate  the  parts  involved  in  the 
inquiry. 

§  118.  In  cases  wrhere  the  description  sets  forth  a  manu- 
facture, there  ought  to  be  a  separate  claim  for  each  of  its 
patentable  features,  or  at  least  for  the  article  without  any 
dispensable  feature;  for  if  there  is  but  one  claim,  and  if  all 
those  features  are  covered  by  it,  then  those  persons  who 
manage  to  dispense  with  even  the  least  of  them,  incur 
no  liability  by  making,  using,  or  selling  articles  which 
possess  all  the  others.37 

§  119.  In  cases  where  the  description  relates  to  a 
composition  of  matter,  the  claim  should  cover  that  com- 
position in  its  entirety,  and  should,  either  expressly,  or 

F.  R.  537,  1890;  Brush  Electric  v.  Wesson,  127  F.  R.  333,  1903; 

Co.  v.  Electric  Imp.  Co.,  52  F.  R.  American  Can  Co.  v.  Hickmott 

975,  1892.  Asparagus  Co.,   142  F.  R.   141, 

35  Davis  Sewing  Machine  Co.  1905;  Union  Match  Co.  v.  Dia- 
v.  New  Departure  Mfg.  Co.,  217  mond  Match  Co.,  162  F.  R.  148, 
F.  R.  775,  1914.  1908;  Continental  Paper  Bag  Co. 

36  Dudley  E.  Jones  Co.  v.  Mun-  v.  Eastern  Paper  Bag  Co.,  210 
ger  Mfg.  Co.,  49  F.  R.  64,  1891;  U.  S.  405,  1908. 

Williams  v.  Steam  Gauge  &  Lan-         37  Prouty  v.  Ruggles,  16  Peters, 
tern  Co.,   47   F.   R.   323,    1891;      336,  1842. 
Colts  Patent  Firearms  Mfg.  Co. 


CHAP.    VI.]  APPLICATIONS  139 

by  reference  to  the  description,  specify  the  respective 
proportions  which  the  different  ingredients  bear  to  each 
other.38  But  where  some  of  the  described  ingredients 
may  be  dispensed  with,  the  applicant,  if  he  states  that 
fact  in  the  description,  may  have  a  separate  claim 
for  a  composition  of  matter  composed  only  of  the 
residue;  or  he  may  have  a  single  claim  covering  the 
indispensable  ingredients,  whether  with  or  without  the 
others.39 

§  120.  In  cases  where  the  description  relates  to  a  proc- 
ess, the  claim  should  cover  all  the  necessary  occurrences 
in  that  process,  and  cover  no  more.  If  it  covers  less  it 
will  be  void  for  want  of  utility;  and  if  it  covers  more,  it  can 
be  evaded  by  persons  who  omit  any  one  which  is  unneces- 
sary, when  using  the  others. 

§  120a.  In  cases  where  the  description  and  its  accom- 
panying drawing  or  photograph  represent  a  design,  the 
claim  may  identify  its  subject  by  a  reference  to  that  draw- 
ing or  photograph.40  But  where  a  claim  for  a  design  ends 
with  the  words  "  substantially  as  shown"  that  claim  refers 
to  the  description  as  well  as  to  the  drawing.41  And  a 
design  patent  may  contain  a  claim  for  the  entire  design, 
with  other  claims  for  such  of  the  parts  of  the  design  as 
are  independently  patentable.42  But  several  unconnected 
ornaments  cannot  lawfully  be  aggregated  and  claimed  to- 
gether in  one  claim.43 

§  121.  The  signatures  of  the  applicant  must  embody 

38  Tyler  v.  Boston,  7  Wallace,  41  Whittall  v.  Lowell  Mfg.  Co., 
327,  1868;  Panzl  v.  Battle  Island      79  F.  R.  789,  1897. 

Paper  Co.,  138  F.  R.  48, 1905.  42  Dobson  v.  Hartford  Carpet 

39  Rubber  Co.  v.  Goodyear,  9  Co.,  114  U.  S.  446,  1885;  Britton 
Wallace,  788,  1869.  v.  White  Mfg.  Co.,  61  F.  R.  95, 

40  Dobson  v.  Dornan,  118  U.  S.  1894. 

14,  1885.  43  Dukes  v.  Bauerle,  41  F.  R. 

See  Section  174.  781,  1890. 


MO  UPPLICATTONfl  [('HAP.   VI. 

the  full  i ut i iic  and  must  be  legibly  written. ■"  Witnesses 
to  the  drawing  are  not  required  since  the  Act  of  March  3, 
1915,  amending  Section  4889  of  the  Revised  Statutes 
went  into  effect.15  The  grammatical  construction  of 
the  prior  statutory  provisions,  relevant  to  signatures, 
seems  to  indicate  that  the  document  signed  by  the 
applicant,  and  not  the  signature  of  that  applicant,  is  the 
thing  which  is  to  be  attested  by  the  two  witnesses.  In 
cases  where  language  of  similar  character  has  been  used 
in  statutes  which  prescribe  the  mode  of  attesting  wills, 
it  has  been  decided  to  be  immaterial,  whether  the  wit- 
nesses sign  before  or  sign  after  the  execution  of  the  docu- 
ment;46 but  where  such  statutes  have  provided  for  at- 
testing the  signatures  rather  than  the  will,  it  is  the  law 
that  the  document  is  void  if  the  witnesses  sign  before  the 
testator.47  It  was  the  practice  of  the  Patent  Office  when 
witnesses  were  required,  to  regard  the  attestation  as  being 
attestation  of  the  signatures,  and,  accordingly,  to  require 
two  witnesses  for  each  signature,  in  cases  of  joint  appli- 
cations for  joint  letters  patent.  The  same  two  witnesses 
could  indeed  attest  all  the  signatures;  but  where  one  wit- 
ness attested  the  signature  of  one  joint  inventor,  and 
another  witness  attested  the  signature  of  the  other,  of 
two  joint  inventors,  the  Patent  Office  held  the  attesta- 
tion to  be  insufficient.  It  has  been  held  that,  where  one  of 
the  witnesses  has  signed  the  drawing  with  the  names  of 
the  inventors  and  has  also  signed  the  name  of  the  attorney 
in  fact,  there  is  a  presumption  that  he  had  authority  to  do 
so,  and  that  as  it  did  not  appear  that  the  Commissioner 
was  misled  on  the  merits,  or  that  there  was  any  fraud  or 

44  Patent  Office  Rule  40.  48  O'Brien    v.     Gallagher,     25 

« Act    Mar.    3,    1915,    Chap.  Conn.  229,  1856. 

94,  Sec.  1,  38  Statutes  at  Large,  47  Wharton  on  Evidence,  Sec- 

958.  tion  888. 


CHAP.    VI.]  APPLICATIONS  141 

intent  to  deceive,  such  facts  did  not  operate  to  defeat  the 
patent.48 

§  122.  The  oath  is  not  required  by  the  statute  to  be  in 
writing,  nor  to  be  recorded.  It  may  be  taken  anywhere 
in  the  United  States,  before  any  person  authorized  by  law 
to  administer  oaths  at  that  place;  or,  when  the  applicant 
resides  in  a  foreign  country,  it  may  be  taken  before  any 
minister,  charge  d'affaires,  consul,  or  commerical  agent, 
holding  commission  under  the  government  of  the  United 
States,  or  before  any  notary  public,  judge,  or  magistrate, 
having  an  official  seal,  and  authorized  to  administer  oaths 
in  the  foreign  country  in  which  the  applicant  may  be,  and 
whose  authority  may  be  proved  by  a  certificate  of  a  diplo- 
matic or  consular  officer  of  the  United  States.49 

Recital  in  the  letters  patent,  that  the  required  oath  was 
made  by  the  applicant,  is,  in  the  absence  of  fraud,  conclu- 
sive evidence  of  that  fact.50  The  presence,  in  the  files  of 
the  Patent  Office,  of  a  paper  purporting  to  be  the  oath  in 
a  given  case,  but  void  for  lack  of  a  jurat,  or  for  some  other 
fault,  is  a  harmless  circumstance.51  In  such  a  case  the  law 
presumes  that  the  oath  recited  in  the  letters  patent  was 
made  orally,  or  was  embodied  in  some  other  paper.  It  is 
presumed  that  the  Commissioner  will  never  issue  a  patent 
till  he  is  satisfied  that  the  applicant  has  somehow  made 

48Hallock     v.     Babcock,     121  v.  Coffield  Motor  Washer  Co.,  227 

F.   R.    226,    1903;   Patterson    v.  F.  R.  987,  1915. 
United   States,  202   F.   R.    208,         51  Crompton  v.  Belknap  Mills,  3 

1913.  Fisher,  536,  1869;  De  Florez  v. 

49  Revised  Statutes,  Section  Reynolds,  14  Blatch.  506,  1878; 
4892,  as  amended  in  32  Statutes  Hoe  v.  Kahler,  12  F.  R.  Ill, 
at  Large,  Part  1,  p.  1225,  Ch.  1882;  Hancock  Inspirator  Co.  v. 
1019,  Section  2.  Jenks,  21  F.  R.  914, 1884;  Empire 

50  Seymour  v.  Osborne,  11  Wal-  Cream  Separator  Co.  v.  Sears, 
lace,  516,  1870;  Wayne  Mfg.  Co.  Roebuck  &  Co.,  157  F.  R.  238, 

1907. 


L42  APPLICATIONS  [CHAP.    VI. 

oath  to  the  facts  to  which  the  statute  requires  him  to 
swear.  When  the  Commissioner  is  so  satisfied,  and  re- 
cites the  fact  in  the  letters  patent,  all  inquiry  on  the  sub- 
ject is  foreclosed,  except  in  cases  of  actual  fraud.52  Rule 
47  of  the  Patent  Office  provides,  however,  that  the  oath  or 
affirmation  is  to  be  attested  in  all  cases  by  the  proper 
official  seal  of  the  officer  before  whom  it  is  taken.  That 
implies  that  the  Commissioner  requires  the  oath  to  be  put 
into  writing.  If,  however,  he  were  to  waive  that  require- 
ment in  a  given  case,  and  were  to  content  himself  with  an 
oral  oath,  and  were  to  recite  in  the  patent  that  the  required 
oath  was  made,  the  law  would  still  have  been  complied 
with. 

§  123.  The  statute  requires  an  applicant  to  make  oath 
to  the  statement  that  he  does  verily  believe  himself  to 
be  the  first  inventor  of  the  invention  for  which  he  solicits 
a  patent,  and  to  state  of  what  country  he  is  a  citizen.53 
In  the  expression  "  described  and  claimed"  found  in  the 
form  of  oath  prescribed  by  the  Patent  Office  (Rule  46)  the 
word  "and"  is  construed  as  a  disjunctive,  and  accordingly 
the  oath  applies  to  what  is  described  and  also  to  what  is 
claimed,  and  is  not  limited  merely  to  what  is  both  de- 
scribed and  claimed.54  The  Patent  Office  rule  requires 
that  the  statement  mentioned  shall  also  be  made  in  the 
oath;  and  that  the  applicant  shall  also  state  in  the  oath, 
where  he  resides;  and  that  the  invention  has  not  been 
patented  to  himself,  or  to  any  other  person  with  his 
consent  or  knowledge,  in  any  country,  more  than  two  years 
prior  to  his  application,  or  on  an  application  filed  in  any 

52  Wayne  Mfg.  Co.  v.  Coffield  at  Large,  Part  1,  Ch.  1019,  Sec- 
Motor  Washer  Co.,   227  F.   R.      tion  2. 

987,  1915.  54  Crompton  &  Knowles  Loom 

53  Revised  Statutes,  Section  Works  v.  Stafford  Co.,  205  F.  R. 
4892,  as  amended  in  32  Statutes      925,  1913. 


CHAP.    VI.]  APPLICATIONS  J4H 

foreign  country,  by  any  person  in  privity  with  him,  more 
than  twelve  months  prior  to  his  application;  and  that,  to 
the  best  of  his  knowledge  and  belief,  the  invention  has  not 
been  in  public  use  or  on  sale  in  the  United  States,  nor 
described  in  any  printed  publication  or  patent  in  any 
country,  for  more  than  two  years  prior  to  his  application 
in  this  country.55 

The  Patent  Office  rule  also  requires  certain  other 
statements  to  be  made  in  oaths,  in  certain  special 
cases.55 

The  statute  of  1836,  which  was  in  force  till  the  approval 
of  the  Act  of  1870,  required  the  applicant  to  make  oath  or 
affirmation  of  what  country  he  was  a  citizen,56  whereas  the 
Act  of  1870,  and  the  Revised  Statutes,  require  only  his 
statement  on  that  subject.  The  old  law  governs  all  appli- 
cations made  before  July  8th,  1870;  and  under  it  Justice 
Grier  decided,  for  certain  reasons  which  have  not  existed 
since  1870,  that  where  an  applicant  mentioned  a  wrong 
country  in  his  oath,  that  error  rendered  his  patent 
void,  even  though  it  arose  from  an  erroneous  opinion 
relevant  to  what  constituted  citizenship  of  the  United 
States.57  But  under  the  statute  of  1870,  re-enacted  in 
the  Revised  Statutes,  such  an  error  does  not  invalidate  a 
patent.58 

When  an  application  for  a  patent  is  made  by  an  executor 
or  administrator  of  a  deceased  inventor,  the  statute  directs 
the  oath  to  be  so  varied  in  form  that  it  can  be  made  by 
him.59  Whether,  in  such  a  case,  it  is  necessary  for  the  ap- 
plicant to  swear  that  he  believes  that  the  deceased  be- 

55  Patent  Office  Rule  46.  58  Tonduer    v.    Chambers,    37 

56  5  Statutes  at  Large,  Ch.  357,      F.  R.  337,  1889. 

Section  6,  p.  119.  59  Revised     Statutes,     Section 

67  Child  v.  Adams,  1  Fisher,  193,  4896,  as  amended  in  Act  May  23, 
1854.  1908,  35  Stat.  245. 


I  I  I  APPLICATIONS  [CHAP.    VI. 

lieved  himself  to  be  the  first  inventor,  or  whether  it  is 
necessary  for  the  applicant  to  swear  that  he  believes  that 
t  he  deceased  was  in  fact  the  first  inventor  of  the  invention, 
is  an  unsettled  question.  If  the  first  is  the  true  view,  then 
an  executor  may  obtain,  without  perjury,  a  patent  for  an 
invention  which  he  may  know  to  have  been  previously 
used  in  the  United  States.  If  the  second  is  the  true  view, 
then  an  executor  may  be  unable  to  obtain,  without  per- 
jury, a  patent  for  an  invention  never  before  known  or 
used  in  this  country,  and  not  previously  patented  or  de- 
scribed in  any  printed  publication,  in  this  or  any  foreign 
country,  and  not  known  or  believed  by  its  inventor,  to 
have  been  previously  known  or  used  anywhere  in  the 
world.  In  the  first  of  these  contingencies,  a  wrong  may 
result  to  the  public,  and  in  the  last,  a  wrong  may  result 
to  the  beneficiaries  of  the  deceased. 

§  124.  An  affirmation  in  judicial  form  may  always  be 
substituted  for  any  oath  required  by  any  United  States 
statute.60  Nor  is  this  rule  confined,  as  it  is  in  the  statutes 
of  some  of  the  States,  to  cases  where  the  affiant  informs 
the  magistrate  that  he  has  scruples  of  conscience  against 
taking  an  oath. 

§  125.  The  Patent  Office  fee,  due  with  the  application 
for  a  patent  for  a  process,  machine,  manufacture,  or  com- 
position of  matter,  is  fifteen  dollars,  and  a  final  fee  of 
twenty  dollars  is  payable  after  such  a  patent  has  been 
allowed  and  before  it  is  issued.  The  fees  for  patents  for 
designs,  vary  with  the  length  of  the  terms  of  the  patents 
applied  for.  For  such  a  patent  for  three  years  and  six 
months,  the  fee  is  ten  dollars :  for  such  a  patent  for  seven 
years,  the  fee  is  fifteen  dollars:  for  such  a  patent  for  four- 
teen years,  the  fee  is  thirty  dollars.61     Fees  for  design 

60  Revised     Statutes,     Section         61  Revised     Statutes,     Section 
1.  4934. 


CHAP.    VI. J  APPLICATIONS  145 

patents  are  required  to  be  paid  in  advance.02  The  final 
fee,  above  mentioned,  must  be  paid  within  six  months 
after  the  patent  is  allowed,  and  notice  thereof  is  sent  to 
the  applicant  or  his  agent;  and  the  patent  must  issue 
within  three  months  after  the  fee  is  paid;  and  if  that  fee 
is  not  paid  within  the  six  months,  the  statute  provides 
that  the  patent  shall  be  withheld.63  The  Commissioner  of 
Patents  has  no  jurisdiction  to  do  what  the  statute  forbids. 
Therefore  if  he  were  to  issue  a  patent  on  an  application, 
the  final  fee  for  which  was  not  paid  till  more  than  six 
months  after  the  patent  was  allowed,  he  would  be  acting 
without  authority,  and  the  patent  would,  for  that  reason, 
be  void.  At  common  law,  a  month  is  a  lunar,  not  a  cal- 
endar month.64  Many  of  the  States  have  reversed  this 
definition  by  statute,  and  though  Congress  has  never  done 
so,  the  Supreme  Court  of  the  United  States  has  reached 
that  good  result  by  judicial  interpretation;  and  the  word 
" month"  wherever  it  occurs  in  the  patent  laws,  must  now 
be  taken  to  mean  a  calendar  and  not  a  lunar  month.65 

§  126.  Drawings  are  required  by  the  statute  to  be  fur- 
nished by  applicants  for  patents,  in  all  cases  wherein  the 
invention  admits  of  representation  by  drawings.66  The 
statutory  requirement  relevant  to  the  character  of  such 
drawings,  is  merely  that  they  shall  be  signed  by  the  appli- 
cant or  by  his  attorney  in  fact.  The  Patent  Office  rules 
require,  in  addition,  that  drawings  must  show  every  fea- 
ture of  the  invention  covered  by  the  claims;  and  when  the 
invention  consists  of  an  improvement  on  an  old  machine, 
must  exhibit,  in  one  or  more  views,  the  invention  itself, 


62  Patent  Office  Rule  190. 

85  Guaranty      Trust 

Co.     v. 

63  Revised     Statutes,     Section 

Railroad    Co.,    139    U. 

S.    145, 

4885,  as  amended  by  Act  May  23, 

1891. 

1908,  35  Stat.  246. 

66  Revised     Statutes, 

Section 

64  Blackstone,  Book  2,  Ch.  9. 

4889. 

I  Hi  APPLICATIONS  [CHAP.    VI. 

disconnected  from  the  old  structure,  and  also,  in  another 
view,  so  much  only  of  the  <>1<1  structure  as  will  suffice  to 
show  the  connection  of  the  invention  therewith.67  Those 
rules  also  describe  numerous  other  characteristics  for  draw- 
ings,68 which  must  he  carefully  followed,  in  order  to  secure 
favorable  action  from  the  Patent  Office. 

To  be  as  useful  as  possible,  all  drawings  for  letters  pat- 
ent oughl  to  show  the  true  positions  and  proportions  of 
the  parts  of  the  devices  which  they  purport  to  delineate 
so  far  as  necessary  to  show  the  invention;  but  it  is  not 
necessary  that  they  be  accurate  enough  to  be  used  as 
working  drawings,  from  which  to  construct  specimens  of 
those  inventions.69 

Drawings  in  applications  filed  prior  to  July  8,  1870,  and 
after  July  4,  1836,  were  required  to  have  "  written  refer- 
ences." 70  The  object  of  such  references  was  to  connect  the 
various  parts  of  the  drawings  with  the  corresponding  parts 
of  the  specification;  but  it  was  a  sufficient  compliance  with 
that  statute,  where  those  references  were  made  on  the 
drawings,  though  not  made  in  the  specifications.71  The 
present  statute  says  nothing  about  any  references,  or 
other  means  of  connecting  drawings  with  specifications; 
but  the  Patent  Office  rules  require  that  they  shall  be 
connected  by  figures  adjacent  to  the  different  views,  and 
by  letters  or  numerals  adjacent  to  the  different  parts  of 
the  drawings,  and  by  incorporating  those  figures  and  letters 
or  numerals  in  the  descriptive  part  of  the  specification.72 

67  Patent  Office  Rule  50.  ing  Mach.  Co.  v.  E.  C.  Fuller  Co., 

68  Patent  Office  Rule  52.  204  F.  R.  286,  1913. 

89  American  Hide  and  Leather  70  5  Statutes  at  Large,  Ch.  357, 

Splitting  Machine  Co.  v.  Machine  Section  6,  p.  119. 

Co.,  4  Fisher,  284,  1870;  Ro3^er  v.  71  Emerson  v.  Hogg,  2  Blatch.  1, 

Coupe,  29  F.  R.  369,  1886;  Wold  1845. 

v.  Thayer  &  Chandler,  148  F.  R.  72  Patent  Office  Rule  38. 
227,  1906;  Manhattan  Book  Cas- 


CHAP.    VI.]  APPLICATIONS  147 

§  127.  A  model  of  the  invention  is  required  by  the 
statute  to  be  furnished  by  the  applicant,  in  all  cases 
wherein  the  invention  admits  of  representation  by  model, 
provided  the  Commissioner  requires  a  model.73  This  pro- 
viso was  not  in  the  statute  of  1836,  but  it  was  inserted 
in  that  of  1870,  in  order  to  enable  the  Commissioner  to 
dispense  with  models,  in  all  cases  where  their  utility  is 
inferior  in  value  to  their  cost,  and  to  the  room  they  would 
occupy  in  the  Patent  Office.  Under  the  operation  of  the 
proviso,  models  are  at  present  called  for  by  the  Com- 
missioner in  very  few  of  the  cases  which  admit  of  repre- 
sentation thereby. 

§  128.  Specimens  of  compositions  of  matter,  and  of  the 
ingredients  thereof,  are  required  by  the  statute  to  be  fur- 
nished by  applicants  for  patents  for  such  compositions  of 
matter,  in  all  cases  where  the  Commissioner  calls  for  such 
specimens.74  He  always  does  call  for  at  least  a  specimen  of 
the  composition,  put  up  in  proper  form  to  be  preserved, 
unless  that  composition  is  in  its  nature  perishable.75 

§  129.  An  application  for  a  patent  dates  from  its  filing  in 
the  Patent  Office,  and  not  from  the  day  of  its  execution  by 
the  applicant,  nor  from  the  day  of  the  deposit  of  a  model  in 
the  Patent  Office,  nor  from  the  day  of  the  deposit  of  any- 
thing there  less  than  the  full  application,76  but  where  an 
application  is  divided  by  filing  a  new  one  for  part  of  its 
subject,  the  new  one  will  date  from  the  date  of  the  old 
one.77  In  the  absence  of  other  evidence,  the  date  of  the 
application  for  a  particular  patent,  is  taken  to  be  identical 

73  Revised  Statutes,  Section  town  Soap  Stone  Stove  Co.,  5 
4891 ;  Patent  Office  Rule  56.  Bann.  &  Ard.  108, 1880;  Campbell 

74  Revised     Statutes,     Section  v.  New  York,  35  F.  R.  504,  1888. 
4890.  77  Smith  &  Griggs  Mfg.  Co.  v. 

75  Patent  Office  Rule  62.  Sprague,  123  U.  S.  250, 1887;  H.  J. 
78  Draper  v.  Wattles,  3  Bann.  &      Heinz  Co.  v.  Cohn,  207  F.  R.  547, 

Ard.  618,  1878;  Henry  v.  Frances-      1913. 


I  IS  APPLICATIONS  [CHAP.    VI. 

with  the  date  of  the  letters  patent  itself.714  Letters  patent, 
and  printed  certified  Patent  Office  copies  of  letters  patent, 
not  old  enough  to  have  expired,  always  have  upon  them, 
in  the  space  under  the  title,  a  memorandum  that  the  ap- 
plication therefor  was  filed  on  a  particular  specified  day. 
But  no  such  memorandum  is  evidence  of  the  fact  it  recites, 
unless  admitted  for  the  purpose  without  objection.79  It  is 
not  evidence  at  common  law,  nor  in  pursuance  of  any  stat- 
ute. That  section  of  the  Revised  Statutes 80  which  gives 
evidential  character  to  certain  certified  copies,  does  not  in- 
clude any  such  memorandum,  because  it  is  no  part  of  the 
letters  patent  upon  which  it  is  placed,  and  because  it  is  not 
a  copy  of  any  record,  book,  paper,  or  drawing  belonging  to 
the  Patent  Office.  It  is  an  indication  of  what  some  such 
record,  book,  or  paper  appears  to  show,  but  it  is  not  evi- 
dence of  its  own  accuracy,  nor  is  it  covered  by  the  certifi- 
cate attached  to  the  document  upon  which  it  is  placed. 
Even  where  the  application  date  is  regularly  proven  by 
competent  evidence,  the  proof  of  date  must  be  supple- 
mented by  proof  of  the  condition  of  the  application  at 
that  date,  at  any  rate  if  the  patent  was  issued  after  the 
date  of  issuance  of  the  patent  in  suit  and  was  not 
pleaded.81 

§  129a.  A  register  of  attorneys  is  kept  in  the  Patent 
Office,  of  all  persons  who  are  entitled  to  represent  appli- 
cants before  the  Patent  Office,  in  the  presentation  and 
prosecution  of  applications  for  patents.82   No  person  whose 

78Worley  v.  Tobacco  Co.,  104  80  Revised     Statutes,     Section 

U.  S.  342,  1881;  Fay  v.  Mason,  892;  see  Section  506. 

120  F.  R.  511,  1903.  81  Roth  v.  Harris,  168  F.  R.  279, 

79  Drewsen  v.  Hartje  Paper  Co.,  1909;  Sundh  Electric  Co.  v.  Inter- 

131  F.  R.  734,  1904;  Twentieth  borough  Rapid  Transit  Co.,  198 

Century  Motor  Car  &  Supply  Co.  F.  R.  94,  1912. 

v.  Holcomb  Co.,  220  F.  R.  669,  82  Patent  Office  Rule  17. 
1915. 


CHAP.    VI.]  APPLICATIONS  149 

name  is  not  on  that  register,  is  permitted  to  prosecute  such 
an  application,  except  on  an  invention  which  he  himself 
has  made,  or  which  has  been  assigned  to  him.83  Any  at- 
torney at  law  in  good  standing  in  any  court  of  record,  any- 
where in  the  United  States  or  any  Territory  thereof,  will, 
upon  his  written  request,  be  admitted  to  that  register, 
when  he  furnishes  a  certificate  of  the  clerk  of  such  court, 
duly  authenticated  under  the  seal  of  the  court,  that  he  is 
an  attorney  in  good  standing  therein.  And  any  person, 
not  an  attorney  at  law,  wall  likewise  be  admitted,  upon  his 
written  application,  when  he  files  proof  to  the  satisfaction 
of  the  Commissioner  of  Patents,  that  he  is  a  person  of  good 
moral  character  and  good  repute,  and  that  he  is  competent 
to  render  valuable  services  in  assisting  applicants,  in  the 
presentation  and  prosecution  of  applications  before  the 
Patent  Office.84 

Any  person  may  be  expelled  from  the  Patent  Office  regis- 
ter, when  he  is  shown  to  be  incompetent  or  disreputable,  or 
to  be  guilty  of  gross  misconduct.85  Such  a  showing  cannot 
be  made  ex  parte;  but  only  at  a  hearing  before  the  Commis- 
sioner of  Patents,  on  charges  of  which  the  accused  person 
has  had  notice,  and  to  which  he  is  given  an  opportunity  to 
reply,  by  evidence  and  argument,  in  person  and  by  an  at- 
torney.86 No  appeal  lies  from  any  action  of  the  Commis- 
sioner of  Patents  on  such  charges;87  but  that  action,  if 
adverse  to  the  accused,  must  be  approved  by  the  Secre- 
tary of  the  Interior  before  it  is  enforced.88  That  approval 
may  be  given  by  an  indorsement  upon  the  recorded  judg- 

83  Patent  Office  Rule  17;  23  8B  Rule  9  of  the  Interior  Depart- 
Statutes  at  Large,  Ch.  98,  Sec-      ment. 

tion  5.  87  Weddeburn  v.  Bliss,  12  App. 

84  Patent  Office  Rule  17.  D.  C.  500,  1898. 

85  Revised  Statutes, Section  487,  8S  Revised  Statutes,  Section 
and  23  Statutes  at  Large,  Ch.  98,  487. 

Section  5. 


1T)()  APPLICATIONS  [CHAP.    VI. 

menl  of  the  Commissioner,  and  without  any  hearing  before 
the  Secretary  himself.88 

$  130.  Those  transactions  which  constitute  an  original 
application  for  a  patent,  have  thus  far  constituted  the 
subjects  explained  in  this  chapter.  While  such  an  applica- 
tion is  pending  in  the  Patent  Office,  the  Commissioner  of 
Patents  has  no  authority  to  furnish  a  copy  of  any  paper 
which  belongs  to  it,  to  anyone,  except  the  applicant,  or 
his  attorney  or  agent.  And  no  Patent  Office  official  has 
any  authority  to  give  to  any  person  any  information  about 
any  pending  application;  except  so  far  as  the  rules  of  the 
Patent  Office  authorize  the  giving  of  certain  limited  in- 
formation specified  therein,  to  those  who  make  or  who 
represent  an  interfering  application.90 

When  an  application  is  made  by  any  person,  it  becomes 
the  duty  of  the  Commissioner  to  cause  an  examination 
thereof,  and  of  the  invention  covered  thereby.  If  upon 
such  examination,  it  appears  that  the  applicant  is  justly 
entitled  to  a  patent  under  the  law,  it  is  the  duty  of  the 
Commissioner  to  issue  one  to  him  for  that  invention.91 
The  statute  does  not  prescribe  that  the  Commissioner  shall 
cause  this  examination  to  be  made  by  any  particular 
subordinate,  and  he  may  overrule  the  decision  of  any  sub- 
ordinate to  whom  he  may  have  committed  the  matter.92 

The  examination  may  extend  not  only  to  the  novelty  of 
the  invention  covered  by  the  application,  but  also  to  any 
other  question  upon  which  its  patentability  may  depend. 
In  examining  any  question  of  fact  in  that  subject,  the 
Patent  Office  officials  are  not  confined  to  technical  evi- 

89  Weddeburn  v.  Bliss,  12  App.  91  Revised  Statutes,  Sections 
D.  C.  500,  1898.  4893,  4886. 

90  United  States  v.  The  Com-  92  Hull  v.  Commissioner  of  Pat- 
missioner  of  Patents,  54  0.  G.  ents,  7  O.  G.  559,  1875;  8  O.  G. 
267,  1890.  46,  1875. 


CHAP.    VI.]  APPLICATIONS  151 

dence,  but  may  base  their  judgments  upon  any  books, 
publications  or  records  which  they  think  proper.93  But 
they  should  not  take  any  notice  of  any  statement  which 
may  be  made,  relevant  to  the  question  of  patentability  of 
any  pending  application,  by  any  person  not  in  privity 
therewith;  except  so  far  as  they  may  consult  with  each 
other  on  such  questions.  When  such  a  statement  is  re- 
ceived in  writing  by  the  Commissioner  of  Patents,  or  any 
other  Patent  Office  official,  it  may  properly  be  returned 
to  the  sender  as  impertinent.  Citizens  have  no  right  to 
intervene  in  such  cases.94 

§  131.  Whenever,  after  an  examination,  any  application 
for  a  patent  is  rejected,  it  is  the  duty  of  the  Commissioner 
to  notify  the  applicant  thereof,  giving  him  the  reasons  for 
such  rejection,  together  with  such  information  and  refer- 
ences, as  may  be  useful  in  judging  of  the  propriety  of 
prosecuting  the  application,  or  of  altering  the  specifica- 
tion; and  if,  after  receiving  such  a  notice,  the  applicant 
persists  in  his  request  for  a  patent,  with  or  without  alter- 
ing his  specification,  it  thereupon  becomes  the  duty  of  the 
Commissioner  to  cause  a  re-examination  of  the  case.95 
Every  applicant  who  has  been  twice  required  to  divide 
his  application  under  Rule  41  of  the  Patent  Office  is  en- 
titled to  an  appeal  to  the  examiners-in-chief.96  Prior  to 
the  revision  of  the  Patent  Office  Rules  of  January  1,  1916, 
one  requirement  of  division  was  sufficient  to  entitle  the 
applicant  to  such  an  appeal. 

§  132.  If,  without  amending  his  specification,  the  appli- 
cant persists  in  his  request  for  a  patent,  and  if  the  applica- 
tion is  again  rejected  by  the  primary  examiner,  to  whom 

93Drawbaugh  v.  Seymour,  77  95  Revised     Statutes,     Section 

O.  G.  318,  1896.  4903;  Patent  Office  Rule  65. 

"United  States  v.  Allen,   101  "  Patent  Office  Rule  133;  Stein- 

O.  G.  1133,  1902.  metz  v.  Allen.  192  U.  S.  543,  1904. 


1")'_>  APPLICATIONS  [CHAP.    VI. 

the  Commissioner  referred  the  case,  then  the  applicant 
may  appeal  to  the  board  of  examiners-in-chief;97  and  if 

unsuccessful  there,  he  may  appeal  to  the  Commissioner.98 
If  the  Examiner  refused  to  forward  the  appeal  and  the 
Commissioner  refused  to  compel  him  to  do  so,  the  proper 
remedy  is  to  apprj  to  the  Court  of  Appeals  of  the  District 
of  Columbia  for  a  writ  of  mandamus  to  compel  him  to  do 
so,  as  appeal  does  not  lie  in  such  case.0'-'  Such  an  appeal 
may  be  heard  by  the  Commissioner,  or  by  the  Assistant 
Commissioner,  or  the  First  Assistant  Commissioner,  under 
assignment  by  the  Commissioner  to  that  duty.100  If  an 
appeal  is  thus  heard  by  the  Assistant  Commissioner,  no 
appeal  from  his  decision  lies  to  the  Commissioner.  And 
no  decision  of  any  Commissioner  or  any  Assistant  Com- 
missioner of  Patents,  can  be  reconsidered  and  set  aside 
by  any  successor,  except  for  fraud,  clerical  error  apparent 
on  the  face  of  the  record,  or  newly  discovered  evidence, 
presented  under  circumstances  which  would  justify  a 
new  trial  in  an  action  at  law.101 

And  all  appeals  must  be  heard  on  the  case  as  submitted 
to  the  primary  examiner.102  No  appeal,  therefore,  should 
be  taken  until  the  application  is  in  such  a  condition  that 
the  patent  will  issue,  if  the  decision  of  the  primary  exam- 
iner is  reversed.103  If  that  decision  is  reversed  by  the 
board  of  examiners-in-chief,  the  primary  examiner  can 
require  no  amendment,104  but  must  pass  the   case  for 

97  Revised     Statutes,     Section  101  In  re  Hoeveler  &  McTighe, 

4909.  21  D.  C.  Rep.  107,  1892. 

98  Revised     Statutes,     Section  102  Hammond's  Appeal,  2  O.  G. 

4910.  57,  1872. 

99  Ex  Parte  Frasch,  192  U.  S.  103  Mewes'  Appeal,  2  O.  G.  617, 
566,  1904.                                              1872. 

100  United  States  v.  Duell,  95  0.  104  Brunner's  Appeal,  1  O.  G. 
G.  1049,  1901,  Act  July  16,  1914,      303,  1872. 

c.  141,  Sec.  1,  38  Statutes,  491. 


CHAP.    VI.]  APPLICATION'S  [53 

issue.  If  the  board  affirms  the  decision  of  the  primary 
examiner,  the  Commissioner  will  not  reverse  the  board 
on  any  question  of  fact,  unless  its  decision  was  clearly 
against  the  weight  of  evidence.10"'  If  the  Commissioner 
affirms  the  decision  of  the  board,  because  the  patent  ought 
not,  in  his  judgment,  to  issue,  he  need  assign  but  one 
reason  for  that  opinion.  The  applicant  cannot  demand  of 
him  that  he  pass  upon  any  other  question. 10fi  And  the 
Commissioner  may,  at  any  time  before  the  issue  of  a 
patent,  reverse  his  own  or  any  other  favorable  Pat- 
ent Office  action  thereon,107  except  that  of  a  prede- 
cessor of  himself,  or  of  a  predecessor  of  the  Assistant 
Commissioner,108  and  may  thereupon  reject  the  ap- 
plication. 

In  Lowry  v.  Allen  109  it  is  held  that  Rule  124  of  the  Pat- 
ent Office  providing  that  no  appeal  will  be  permitted 
from  a  decision  rendered  upon  motion  for  dissolution 
affirming  the  patentability  of  a  claim  or  the  applicant's 
right  to  make  the  same  is  not  in  violation  of  Sec- 
tions 482,  4904,  4910,  4911  of  the  Revised  Statutes  as 
those  statutes  provide  only  for  appeals  on  questions  of 
priority  of  invention  and  appeals  on  other  questions 
are  left  by  Section  483  to  the  regulation  of  the  Patent 
Office.109 

When  the  Primary  Examiner  refused  to  transmit  an 
appeal  to  the  examiners-in-chief  the  Commissioner  in 
a  proper  case  is  charged  with  the  duty  of  compelling 
him  to  do  so.110 

105  Hazelip  v.  Richardson,  10  108  In  re  Hoeveler  &  McTighe, 
O.  G.  747,  1876.  21  D.  C.  Rep.  107,  1892. 

106  Commissioner  of  Patents  v.  m  Lowry  v.  Allen,  203  U.  S. 
Whiteley,  4  Wallace,  532,  1866.  476,  1906. 

107  United  States  v.  Butter-  uo  Steinmetz  v.  Allen,  192  U.  S. 
worth,  3  Mackey,  233,  1884.  543, 1904. 


[54  APPLICATIONS  [CHAP.    VI. 

§  L33.  When  the  ( Jommissioner  of  Patents,  or  the  Assist- 
ant Commissioner,  finally  rejects  an  application  for  a 
patent,  the  applicant  may  appeal  to  the  Court  of  Appeals 
of  the  District  of  Columbia,111  but  not  to  the  Secretary 
of  the  Interior;  112  and  if  the  Commissioner  refuses  to 
allow  that  appeal,  he  may  be  compelled  to  do  so,  by  a 
writ  of  mandamus,  granted  by  that  court,  upon  the  pe- 
tition of  the  applicant.113  No  appeal  lies  to  that  court 
from  a  rejection  of  an  amendment;  but  only  from  final 
rejections  of  specifications  as  originally  filed,  or  as  amended 
by  leave  of  the  Patent  Office;  U1  nor  from  any  decision 
requiring  a  division  of  an  application;  m  mandamus  to  the 
Commissioner  is  the  proper  remedy  to  compel  an  appeal 
in  the  patent  office  in  a  proper  case;  U6  nor  from  any  de- 
nial of  a  rehearing;  117  nor  from  any  rejection  of  a  second 
application,  of  the  same  applicant,  for  a  patent  on  the 
same  subject,  as  that  of  an  application  previously  re- 
jected.118 Such  an  appeal  must  be  taken  within  the  time 
provided  for  it  by  the  rules  of  the  court.119  To  sum  up  ap- 
peals to  the  Court  of  Appeals  of  the  District  of  Columbia 
from  the  Commissioner  of  Patents  is  limited  to  two  classes 
of  decisions,  namely,  "  a  final  rejection  of  an  application  for 
a  patent,  and  a  final  award  of  priority  to  one  of  the  parties 
in  an  interference  case."  119a    In  appeals  in  interference 

111  27  Statutes  at  Large,  Ch.  74,  301,  1902;  see  Ex  Parte  Frasch, 
Section  9,  p.  436;  Revised  Stat-      192  U.  S.  566,  1904. 

utes,  Section  4911;  Revised  Stat-  116  U.   S.   ex  rel.   Steinmetz  v. 

utes  relating  to  the   District  of  Allen,  192  U.  S.  543, 1904. 

Columbia,  Section  780.  117  In  re  Messenger,   12  App. 

112  Butterworth    v.    Hoe,    112  D.  C.  536,  1898. 

U.  S.  50,  1884.  118  In  re  Barratt,  14  App.  D.  C. 

113  Commissioner  of  Patents  v.      255,  1899. 

Whiteley,  4  Wallace,  533,  1866.  119  In  re  ffien,  166  U.  S.  432, 

"*In  re  Chinnock,  21  D.  C.  1897. 

Rep.  594,  1893.  119°/n  re  Fullagar,32  App.  D.  C. 

»»  In  re  Frasch,  20  App.  D.  C.  222. 


CHAP.    VI.]  APPLICATIONS  I .  .."> 

cases  the  court  will  not  pass  on  the  patentability  of  the 
alleged  invention. 1 19'' 

Where  an  appeal  is  taken  to  the  Court  of  Appeals  of 
the  District  of  Columbia,  the  applicant  is  required  to 
give  notice  thereof  to  the  Commissioner,  and  to  file  in 
the  Patent  Office,  within  such  time  as  the  Commissioner 
shall  appoint,  his  reasons  for  the  appeal,  specifically  set 
forth  in  writing.120 

The  court  before  hearing  the  appeal,  gives  notice  to 
the  Commissioner  of  the  time  and  place  thereof,  and  the 
Commissioner  is  required,  thereupon,  to  give  like  notice 
to  all  persons  who  appear  to  be  interested  in  the  case. 
The  appellant  is  required  to  lay  before  the  court,  at  the 
hearing,  certified  copies  of  all  the  papers  in  the  case,  and 
the  Commissioner  is  required  to  furnish  the  court  with  a 
full  written  statement  of  the  grounds  of  his  decision; 
and  at  the  request  of  any  party  interested,  or  of  the 
court,  the  Commissioner  and  the  examiners  may  be 
examined  under  oath,  in  explanation  of  the  principles  of 
the  thing  for  which  a  patent  is  demanded.121 

None  of  the  papers  which  go  from  the  applicant,  or 
from  the  Commissioner,  to  the  court  on  an  appeal,  are 
kept  secret  in  the  court;  122  though  the  papers  of  which 
they  are  copies,  and  all  the  other  papers  in  the  case,  are 
kept  concealed  from  the  public  in  the  Patent  Office,  until 
the  case  is  finally  disposed  of  there,  after  the  court  has 
rendered  its  decision. 

The  court  hears  the  case  on  the  papers  which  were 
before  the  Commissioner,  and  confines  its  revision  of  the 
Commissioner's  decision,  to  the  points  set  forth  in  the 

1196Schupphaus  v.  Stevens,  95  vn  Revised    Statutes,    Section 

0.  G.  1452.  4913. 

120  Revised    Statutes,    Section  122  In  re  Drawbaugh,  66  0.  G. 

4912.  1451,  1894. 


L56  APPLICATIONS  [CHAP.    VI. 

appellant's  reasons  of  appeal.  The  court  will  not  review 
any  point  of  Patent  Office  practice,  unless  some  sub- 
stantial right  was  affected,  and  there  was  an  abuse  of 
discretion,  involved  in  what  was  done  in  the  Patent  Office, 
in  respect  thereto.123  Where  all  those  who  passed  upon  an 
application  in  the  Patent  Office,  reached  the  same  con- 
clusion on  the  questions  involved  therein,  the  appellant 
must  make  out  a  very  clear  case  of  error,  in  order  to  ob- 
tain a  reversal  of  the  decision  from  which  he  appealed.124 
Having  decided  the  questions  involved,  the  court  gives  the 
Commissioner  a  certificate  of  its  proceedings  and  deci- 
sion, which,  being  entered  of  record  in  the  Patent  Office, 
governs  the  further  proceedings  in  the  case.  No  such  de- 
cision, however,  precludes  any  person  from  contesting 
the  validity  of  any  patent  issued  in  pursuance  thereof, 
in  any  court  wherein  that  validity  may  be  called  in  ques- 
tion.125 And  no  such  decision,  if  adverse  to  the  applicant, 
deprives  the  Commissioner  of  jurisdiction  to  grant  a 
patent  for  the  same  invention,  on  a  later  and  proper  ap- 
plication of  the  same  inventor.126 

§  134.  Whenever  a  patent  or  a  reissue  is  refused  by  the 
Commissioner  of  Patents,  or  by  the  Court  of  Appeals  of 
the  District  of  Columbia,127  on  appeal  from  the  Commis- 
sioner, the  applicant  may  file  a  bill  in  equity  in  any  United 
States  court  having  or  acquiring  jurisdiction  of  the  par- 
ties.128   The  only  way  in  which  any  United  States  Dis- 

123  jn  re  Frasch,  20  App.  D.  C.  4914;  Fry  v.  Quintan,  13  Blatch. 
301,  1902.  205,  1875. 

124  In  re  Beswick,  16  App.  D.  C.  126  United  States  v.  Colgate,  32 
350,   1900;  Howard  v.   Hey,   18  F.  R.  624,  1884. 

App.   D.  C.   142,   1901;  Ries  v.  127  Prindle  v.  Brown,  155  F.  R. 

Kirkegaard,  30  App.  D.  C.  199;  531,  1907. 

Onderdonk   v.   Parker,   31   App.  128  Revised    Statutes,    Section 

D.  C.  214.  4915,  and  Section  629,  H  9;  Ber- 

125  Revised    Statutes,    Section  nardin  v.  Northall,  78  O.  G.  1742, 


CHAP.    VI.  J  APPLICATIONS  |  .",7 

trict  Court  can  acquire  jurisdiction  of  the  Commissioner, 
is  by  his  voluntary  appearance  therein  and  submission 
thereto,129  but  the  Supreme  Court  of  the  District  of  Co- 
lumbia has  jurisdiction  over  him,  for  the  purposes  of  this 
law,  by  virtue  of  his  official  residence  in  Washington,  in 
that  District.130  The  complainant  in  such  a  bill  should  be 
the  inventor-applicant,  or,  in  case  of  an  assignment  of 
the  invention,  he  should  be  the  assignee,  because  the 
latter  is  considered  to  be  an  applicant  within  the  meaning 
of  the  law  on  this  subject.131  If  there  is  no  opposing 
party,  a  copy  of  the  bill  is  required  to  be  served  on  the 
Commissioner;  but  the  Secretary  of  the  Interior  is  not  a 
proper  party  to  such  a  bill.132  And  the  Commissioner  is 
not  a  proper  party,133  where  there  is  a  party  whose  in- 
terests are  those  which  are  adverse  to  the  interests  of  the 
complainant;  134  and  in  that  case  the  bill  may  be  filed  in 
any  District  Court  of  the  United  States  for  the  judicial 
district  or  division  wherein  the  defendant  can  be  served 
with  process  regardless  of  his  place  of  residence;135  or  in 
the  Supreme  Court  of  the  District  of  Columbia,  if  that 
party  is  an  inhabitant  of  that  District.136    In  either  case, 

1897,  Ingersoll  v.  Holt,  104  F.  R.  «•  Mergenthaler    Co.    v.    Sey- 

682,    1900;   McKnight  v.   Metal  mour,  66  O.  G.  1311,  1894. 
Volatilization  Co.,  128  F.  R.  51,  134  Graham  v.  Teter,  25  F.  R. 

1904;  Dover  v.  Greenwood,   143  555,  1885. 
F.  R.  136,  1905.  135  Thoma  v.  Perri,  205  F.  R. 

129  Illingworth  v.  Atha,  42  F.  R.  632,  1913.  Contra,  Arbetter  Fell- 
144,  1890.  ing  Machine  Co.  v.  Lewis  Blind 

130  Butterworth  v.  Hill,  114  Stitch  Machine  Co.,  230  F.  R. 
U.  S.  129,  1885.  992,  1915,  holding  that  the  suit 

131  Gay  v.  Cornell,  1  Blatch.  508,  can  be  brought  only  in  the  district 
1849;  Smith  v.  Thompson,  177  F.  of  which  the  defendant  is  an 
R.  721,  1910.     Contra,  Wende  v.  inhabitant. 

Horine,  191  F.  R.  620,  1911.  13fl  24  Statutes  at  Large,   Ch. 

132  Kirk    v.    Commissioner    of      373,  p.  552. 
Patents,  37  O.  G.  451,  1886. 


L58  APPLICATIONS  [chap.   \  I. 

the  jurisdiction  is  unaffected  by  the  fact  that  the  com- 
plainant is  an  inhabitant  of  the  same  jurisdiction.137 

One  to  whom  the  patent  has  been  awarded  after  inter- 
ference proceedings  is,  of  course,  a  proper  party  defend- 
ant, and  this  is  so  at  any  time  before  the  patent  has  ac- 
tually issued,  even  though  the  successful  contestant  has 
assigned  the  application.138  The  reason  given  for  this 
ruling  is  that  under  Section  4895  of  the  Revised  Statutes 
the  Commissioner  has  full  discretion  as  to  whether  the 
patent  shall  issue  to  the  applicant  or  his  assignee. 

Where  either  class  of  the  conditions  mentioned  are  ful- 
filled, the  court  has  jurisdiction  to  adjudge  that  the  ap- 
plicant is  entitled  to  receive  a  patent  for  his  invention, 
as  specified  in  his  final  claims,  or  any  part  thereof,  as  the 
facts  in  the  case  may  appear  to  be,  but  not  as  specified 
in  any  claim  which  the  applicant  relinquished  in  the  Pat- 
ent Office,  or  in  any  new  claim  which  he  never  presented 
there.139  And  such  an  adjudication,  if  made,  author- 
izes the  Commissioner  to  issue  such  a  patent,  on  the  ap- 
plicant's filing  in  the  Patent  Office  a  copy  of  the  adjudica- 
tion, and  otherwise  complying  with  the  requirements  of 
the  law; 140  and  it  then  becomes  the  duty  of  the  Commis- 
sioner to  issue  the  patent.141  But  no  court  has  any  juris- 
diction to  restrain  the  Commissioner  from  issuing  a 
patent  to  the  defendant,  in  any  such  case  as  those  treated 
in  this  section.142 

137Bernardin    v.    Northall,    78  U.  S.  62,  1884;  Vermont  Farm 

0.  G.  1742,  1897.  Machine  Co.  v.  Marble,  20  F.  R. 

138Thoma  v.  Perri,  205  F.  R.  118,  1884. 
632,  1913.  142  Whipple  v.  Miner,  15  F.  R. 

139  Durham  v.  Seymour,  71  117,  1883;  Illingworth  v.  Atha,  42 
O.  G.  601,  1895.  F.    R.    141,    1890;    Richards    v. 

140  Revised  Statutes,  Section  Meissner,  158  F.  R.  109,  1907; 
4915.  Richards  v.  Meissner,  162  F.  R. 

141  Butterworth    v.    Hoe,    112  485,  1908. 


CHAP.    VI.]  APPLICATIONS  159 

In  order  to  decide  the  issues  of  such  a  bill  in  equity  as  is 
treated  in  this  section,  the  court,  where  the  bill  is  pending, 
will  take  testimony,  and  any  other  admissible  evidence, 
according  to  the  course  of  courts  of  equity;  and  will  also 
consider  whatever  was  before  the  Patent  Office  in  the  pro- 
ceedings which  resulted  in  the  refusal  to  grant  a  patent; 
and,  if  the  case  has  been  before  the  Court  of  Appeals  of 
the  District  of  Columbia,  will  also  consider  the  proceedings 
which  took  place  in  that  tribunal.143  The  proceeding, 
however,  is  not  revisory  of  the  Patent  Office  proceeding, 
but  is  an  original  suit  in  equity  and  testimony  taken  in  an 
interference  proceeding,  although  between  the  same  par- 
ties, is  incompetent,  except  as  permitted  by  the  rules 
regulating  the  admission  of  secondary  evidence.144  The 
burden  is  on  the  complainant  to  prove  the  truth  of  his  bill, 
by  evidence  that  is  clear  and  conclusive145  even  though  the 
defendant  default.146  But  although  such  a  suit  is  an  orig- 
inal one,  it  may  not  be  resorted  to  as  a  concurrent 
remedy  with  an  appeal  to  the  Court  of  Appeals  of  the  Dis- 
trict of  Columbia  in  any  case  where  such  an  appeal  lies; 
because,  where  that  remedy  exists,  it  must  be  exhausted 
before  the  ultimate  redress  of  a  bill  in  equity  can  be  in- 
voked.147   It  has  been  said,  however,  that  the  burden  of 

143  Butterworth    v.    Hoe,    112  i«  Durham    v.    Seymour,     71 

U.  S.  61,  1884;  Gandy  v.  Marble,  0.  G.  604,  1895;  Standard  Cart- 

122  U.  S.  439,  1886.  ridge  Co.  v.  Peters  Cartridge  Co., 

i"  Benardin  v.  Northall,  78  77  F.  R.  630,  1896;  Ingersoll  v. 
0.  G.  1742,  1897;  Wheaton  v.  Holt,  104  F.  R.  682,  1900;  Gil- 
Kendall,  85  F.  R.  671,  1898;  lette  v.  Sindelbach,  146  F.  R. 
Dover  v.  Greenwood,  154  F.  R.  758,  1906;  Western  Electric 
854,  1907;  Dover  v.  Greenwood  Co.  v.  Fowler,  177  F.  R.  224, 
(containing  discussion),  177  F.  R.  1910. 

946,  1910;  Appert  v.  Brownsville  148  Davis  v.  Garrett,  152  F.  R. 

Plate  Glass  Co.,  144  F.  R.  115,  723, 1907. 

1904;  Hansen  v.  Slick,  216  F.  R.  147Kirk    v.    Commissioner    of 

164,  1914.  Patents,  37  O.  G.  451,  1886. 


L60  APPLICATIONS  [(HAP.    VI. 

proof  is  strongly  on  the  plaintiff  by  reason  of  the  decisions 
of  the  Court  of  Appeals.14* 

Where  the  Commissioner  withholds  a  patent  by  virtue 
of  his  general,  supervisory  authority,  the  remedy  now 
under  consideration  is  the  only  one  to  which  the  applicant 
can  resort,  for  no  appeal  lies  to  the  Court  of  Appeals  of 
the  District  of  Columbia,  nor  can  any  writ  of  mandamus 
be  granted  by  that  tribunal,  to  compel  the  Commissioner 
to  issue  a  patent  in  such  a  case,149  or  in  any  case  where  the 
law  submits  to  his  discretion,  the  question  involved  in 
his  decision.150 

In  previous  editions  of  this  book  it  has  been  stated  that 
where  a  patent  is  refused  because  of  an  adverse  decision 
of  an  interference,  and  where  an  applicant  files  a  bill  in 
equity  to  procure  a  patent,  on  the  ground  that  the  decision 
of  the  question  of  priority  in  the  interference  was  wrong, 
the  court  will  dismiss  the  bill  if  it  finds  the  alleged  inven- 
tion to  have  been  not  patentable  to  either  of  the  parties  in 
the  interference,  regardless  of  any  question  of  priority  be- 
tween those  parties,  for  which  proposition  the  case  of 
Hill  v.  Wooster  m  was  cited.  It  has,  since  the  Fourth 
Edition  of  this  book  was  issued,  been  held  that  Hill  v. 
Wooster  did  stand  for  the  proposition  above  stated  and 
that  in  an  action  brought  under  Section  4915  of  the  Re- 
vised Statutes,  not  only  priority  between  the  patents 
involved  in  the  interference  may  be  determined  but  also 
patentability.152 

148  Richards  v.  Meissner,  158  ,5°  Ex  rel.  Bigelow,  2  McArthur, 
F.  R.   109,   1907;  Laas  v.  Scott,      30,  1875. 

161  F.  R.  122,  1908;  Richards  v.  151Hffl  v.  Wooster,   132  U.   S. 

Meissner,   163  F.  R.  957,   1908;  693,  1890. 

Greenwood  v.  Dover  (discussing  152  Davis  v.  Garrett,  152  F.  R. 

authorities),  194  F.  R.  90,  1911.  723,  1907;  Hansen  v.  Slick,  216 

149  Hull  v.  Commissioner  of  Pat-  F.  R.  164,  1914.  Contra  Rich- 
ents,  7  O.  G.  559,  1875;  8  0.  G.  ards  v.  Meissner,  163  F.  R.  957, 
46,  1875.  1908. 


CHAP.    VI.]  APPLICATIONS  ](il 

The  remedy  delineated  in  this  section  must  be  invoked 
within  one  year  after  the  last  official  action  on  the 
application,  unless  the  complainant  satisfies  the  court 
in  which  it  is  invoked,  that  the  longer  delay  was  un- 
avoidable.153 

In  an  action  of  the  kind  under  discussion  it  has  been 
held  that  acquisition  pending  suit  of  the  issued  patent  in 
interference  by  the  adverse  party  does  not  cause  the  suit 
to  abate.154 

§  135.  The  right  to  amend  applications  for  patents  is 
one  of  great  value  and  frequent  exercise,  but  it  has  never 
been  expressly  established  by  any  statute.  No  statute 
prior  to  that  of  1836  even  mentioned  the  subject,  and  that 
statute  only  provided  that  whenever  it  appeared  to  the 
Commissioner,  that  one  or  more  of  the  claims  of  an  ap- 
plication were  inadmissible  for  want  of  novelty,  or  that  the 
description  was  defective  and  insufficient,  he  should  notify 
the  applicant  thereof,  and  should  furnish  him  with  such 
information  as  might  be  useful  in  judging  of  the  propriety 
of  altering  his  specification,  so  as  to  exclude  that  part  of 
the  subject-matter  found  not  to  be  new.155  No  change 
relevant  to  this  point  was  made  in  the  statute  till  1870, 
when,  in  the  place  of  the  foregoing  provision,  it  was 
enacted  that  whenever  any  claim  was  rejected,  for  any 
reason  whatever,  the  Commissioner  should  notify  the 
applicant  thereof,  and  should  furnish  him  with  such  in- 
formation as  might  be  useful  in  judging  of  the  propriety 
of   altering    his    specification.156      The    present    statute 

153  Gandy  v.  Marble,  122  U.  S.  F.  R.  73,  1909;  Schmertz  Wire- 
439,  1886;  Revised  Statutes,  Sec-  Glass  Co.  v.  Western  Glass  Co., 
tion  4894;  Westinghouse  Electric      178  F.  R.  973,  1909. 

&  Mfg.  Co.  v.  Ohio  Brass  Co.,  186         155  5  Statutes  at  Large,  Cli.  357; 

F.  R.  518,  1911.  Section  7,  p.  120. 

154  Schmertz  Wire-Glass  Co.  v.  155 16  Statutes  at  Large,  Ch. 
Pittsburgh  Plate  Glass  Co.,  168  230,  Section  41,  p.  204. 


L62  APPLICATIONS  [(.'HAP.    VI. 

on  the  subject  is  substantially  identical  with  that  of 
1870.167 

There  is  no  apparent  material  difference,  at  this  point, 
between  any  of  the  three  statutes,  unless  the  provision  in 
that  of  183G,  relevant  to  the  nature  of  the  amendment  con- 
templated by  that  section,  constitutes  a  limitation  not 
found  in  either  of  the  others.  The  two  later  statutes  pro- 
vide that  the  Commissioner  shall  furnish  the  applicant 
with  such  information  as  may  be  useful  in  judging  of  the 
propriety  of  altering  his  specification.  The  earlier  statute 
adds  to  that  provision  the  words:  "to  embrace  only  that 
part  of  the  invention  or  discovery  which  is  new."  All 
three  of  the  statutes  recognize  the  right  of  an  applicant 
to  alter  his  specification,  after  rejection  of  any  claim 
therein.  They  differ  from  each  other  only  in  regard  to 
the  kind  of  information  which  they  require  the  Commis- 
sioner to  furnish  the  applicant,  to  guide  him  in  the  exercise 
of  that  right.  Neither  of  them  furnishes  the  foundation 
of  that  right,  nor  limits  that  right  to  cases  where  the 
application  has  been  rejected.  They  all  provide  a  pro- 
ceeding for  such  cases,  but  neither  of  them  negatives  the 
existence  of  such  a  right  in  other  cases. 

§  136.  The  real  foundation  of  the  right  to  amend  appli- 
cations for  patents,  is  found  in  Section  4888  of  the  Revised 
Statutes,  a  section  substantially  identical  with  Section  26 
of  the  Patent  Act  of  1870,  and  with  the  second  sentence  of 
Section  6  of  the  Patent  Act  of  1836,  and  with  the  middle 
part  of  Section  3  of  the  Patent  Act  of  1793.  Ever  since 
1793,  one  or  another  of  these  four  enactments  has  been  in 
force,  and  has  provided,  in  substance,  that  before  any  in- 
ventor shall  receive  a  patent  for  his  invention,  he  shall  file 
in  the  Patent  Office  a  full,  clear,  and  exact  written  descrip- 
tion of  that  invention.  Ever  since  1836,  one  or  another 
157  Revised  Statutes,  Section  4903. 


CHAP.    VI. J  APPLICATIONS  163 

of  the  three  statutes  first  mentioned  has  been  in  force, 
and  has  additionally  provided  that  before  any  inventor 
shall  receive  a  patent,  he  shall  particularly  point  out  and 
claim  the  part  or  combination  which  he  claims  as  his  in- 
vention. Now  when  a  statute  enacts  that  a  thing  shall 
be  done  before  a  particular  event  can  occur,  it  implies 
that  it  can  be  done  prior  to  such  an  event.  An  inventor 
may  therefore  do  those  things  before  he  receives  a  patent. 
If  he  fails  in  his  first  attempt  to  furnish  a  proper  and  ade- 
quate description,  or  to  furnish  proper  and  adequate 
claims,  he  may  try  again,  and,  if  necessary,  still  again  and 
again.  If  he  finally  succeeds  in  both,  the  Commissioner 
acquires  jurisdiction  to  grant  him  a  patent,  provided 
all  the  other  requirements  of  the  law  are  also  complied 
with.  The  statute  does  not  attend  to  the  details  of  this 
matter.  It  only  provides  that  at  some  time  before  a  pat- 
ent is  issued,  a  proper  description  and  a  proper  claim  shall 
be  filed  in  the  Patent  Office.  To  what  extent  these  things 
must  be  done  at  first,  and  to  what  extent  and  under  what 
circumstances  they  may  be  done  by  way  of  amendment 
of  the  original  papers,  are  questions  which  are  to  be  de- 
termined in  the  light  of  the  decisions  of  the  courts,  made 
under  general  judicial  authority;  and  of  the  rules  of  the 
Patent  Office,  made  under  Section  483  of  the  Revised 
Statutes.  To  ascertain,  therefore,  what  may,  and  what 
may  not,  be  done  by  way  of  amendments  of  applications, 
the  true  recourse  is  to  those  decisions  and  those  rules. 

§  137.  The  applicant  may  amend  before  or  after  the 
first  rejection,  and  he  may  amend  as  often  as  the  examiner 
presents  any  new  references  or  reasons  for  rejection;  but 
after  such  action  on  all  the  claims  as  entitles  the  applicant 
to  an  appeal  to  the  board  of  examiners-in-chief,  no  amend- 
ment is  allowed,  unless  the  applicant  convinces  the  ex- 
aminer or  the  Commissioner,  that  there  was  a  sufficient 


I  lil  APPLICATIONS  [CHAP.    VI. 

excuse  for  the  delay  in  presenting  it.158  Amendments  not 
affecting  the  merits  may  be  made  after  the  patent  is  al- 
lowed, and  even  after  the  final  fee  is  paid,  provided  those 
amendments  are  approved  first  by  the  examiner,  and  then 
by  the  Commissioner.159 

§  138.  It  was  formerly  held,  that  whenever  an  inventor 
filed  an  application  for  a  patent,  he  was  regarded  as  apply- 
ing for  such  a  patent  as  would  cover  every  patentable 
thing  represented  in  the  specification,  drawing  or  model 
of  that  application.160  If,  therefore,  his  claims  as  first 
submitted  to  the  Commissioner  did  not  cover  every  such 
thing,  he  was  allowed  to  amend  them  to  whatever  extent 
was  necessary  to  make  them  do  so,  or  he  was  allowed  to  add 
other  claims  to  accomplish  that  purpose.  But  the  law  of 
the  subject  has  more  lately  been  laid  down  on  stricter  fines. 

The  general  rule  is  that  no  amended  or  new  claim  can  be 
allowed,  unless  it  is  for  the  "same  invention"  as  the  origi- 
nal application.161  It  has  been  decided  that  this  quoted 
phrase  is  not  confined  in  its  meaning  to  whatever  inven- 
tion was  actually  claimed  by  the  inventor  in  his  original 
application,  and  that  claims  may  be  broadened,  while 
applications  are  pending.162  And  now  the  Supreme  Court 
itself,  has  held  that  where  the  original  specification  and 
drawings  of  an  application,  suggested  the  claims  which 
were  finally  made,  those  claims  were  properly  made  in 
amendment  of  the  original  application.163    Inasmuch  as 

158  Patent  Office  Rule  68.  Co.,  63  F.  R.  604, 1894;  Michigan 

159  Patent  Office  Rule  78.  Central  R.  R.  Co.  v.  Car-Heating 
ia°  Singer     v.     Braunsdorf,     7     Co.,  67  F.  R.  126,  1895. 

Blatch.  532,  1870.  162  Rocker  Spring  Co.  v. Thomas, 

161  Railway  Co.  v.  Sayles,  97     68  F.  R.  200,  1895. 
U.  S.  554,  1878;  Eagleton  Mfg.         163Hobbs  v.  Beach,  180  U.  S. 
Co.  v.  West  Mfg.  Co.,  Ill  U.  S.      397,    1901;   Kirchberger  v.   Am. 
490,  1884;  Beach  v.  Box-Machine      Acetylene  Burner  Co.,  128  F.  R. 

599,  1904. 


CHAP.    VI.]  APPLICATIONS  165 

it  has  also  been  decided,  that  a  drawing  may  be  amended 
in  the  light  of  the  specification,  even  to  the  extent  of 
inserting  in  it,  the  distinguishing  characteristic  of  the 
invention,  when  that  was  accidentally  omitted  from  the 
original  drawing;164  Judge  Wheeler  appears  to  have  been 
right  in  holding,  that  the  claims  of  an  application  may  be 
amended  into  conformity  with  whatever  inventions  were 
described  in  the  original  specification.165 

Some  decisions  have  held,  however,  that  matter  may  be 
introduced  by  way  of  amendment  even  though  the  matter 
introduced  would  create  another  and  different  invention 
than  that  originally  described,  provided  a  new  or  "  supple- 
mental" oath  is  filed  setting  forth  that  the  new  matter 
is  part  of  the  original  invention.166  A  supplemental  oath 
is  not,  however,  necessary  to  cover  claims  additional  to 
those  originally  filed,  where  the  additional  claims  are 
within  the  invention  as  originally  disclosed.167 

164  Consolidated  Brake-Shoe  Loose  Leaf  Binder  Co.,  230  F.  R. 
Co.  v.  Detroit  S.  &  S.  Co.,  59  F.  R.  120,  1915.  See  the  very  doubtful 
903,  1894.  qualification  of  this  rule  in  Kirch- 

165  John  R.  Williams  Co.  v.  berger  v.  American  Acetylene 
Miller,  Du  Brul  &  Peters  Mfg.  Burner  Co.,  128  F.  R.  599, 
Co.,  107  F.  R.  292,  1901;  Cleve-  1904. 

land    Foundry    Co.    v.    Detroit  168  Am.  Lava  Co.  v.  Steward, 

Vapor  Stove  Co.,  131  F.  R.  853,  155   F.    R.   731,    1907;   General 

1904;  Keasby  &  Mattison  Co.  v.  Electric  Co.  v.  Morgan-Gardner 

Carey  Mfg.  Co.,  139  F.  R.  571,  Electric  Co.,  159  F.  R.  951,  1907; 

1905;  Cutter  Hammer  Mfg.  Co.  Ney  Mfg.  Co.  v.  G.  A.  Swineford 

v.  Union  Electric  Mfg.  Co.,  147  Co.,  211  F.  R.  469,  1913.    See 

F.  R.  266,  1906;  Mine  &  Smelter  Steward  v.  American  Lava  Co., 

Supply  Co.  v.  Braeckel  Concen-  215  U.  S.  161,  1909. 

trator  Co.,  197  F.  R.  897, 1912  167  General  Electric  Co.  v.  Mor- 

(discussing  the  subject  and  au-  gan-Gardner    Electric    Co.,    167 

thorities);     Boyce     v.     Stewart-  F.  R.  52,  1908;  American  Steel 

Warner    Speedometer    Corpora-  Foundries  v.  Wolff  Truck  Frame 

tion,  220  F.  R.  118,  1914;  Proud-  Co.     (discussing    the    question), 

fit  Loose  Leaf  Co.  v.  Kalamazoo  189  F.  R.  601,  1911. 


1()()  APPLICATIONS  [CHAP.    VI. 

§  139.  An  applicant  must  amend  his  specification  and 
drawings,  whenever  such  amendment  is  required  to  correct 
inaccuracy  or  unnecessary  prolixity  therein,  or  to  secure 
correspondence  between  the  claims  and  the  other  parts 
of  the  specification  and  the  drawings.168  So  also,  unless 
the  original  drawings  conform  to  certain  standards  of 
artistic  excellence  set  forth  in  the  rules,  the  applicant  must 
furnish  amended  drawings  which  do  conform  to  those 
requirements.169 

§  140.  An  interference  is  a  judicial  proceeding  carried  on 
in  the  Patent  Office,  for  the  purpose  of  determining  the 
question  of  priority  between  two  or  more  parties,  each  of 
which  is  seeking  a  patent  for  the  same  invention;  or  be- 
tween two  or  more  parties,  at  least  one  of  which  is  seeking 
a  patent  for  an  invention  already  covered  by  a  patent 
which  has  not  yet  expired.170  The  proceedings  in  inter- 
ferences are  governed  by  an  elaborate  code  of  Patent 
Office  rules,  which  are  as  binding  as  the  law  itself,171  and 
to  which  the  practitioner,  in  such  cases,  will  necessarily 
resort  for  detailed  information.172  It  is  unnecessary  to 
explain  those  rules  in  this  text-book,  but  it  is  expedient 
to  set  down  in  this  connection  the  relevant  rules  of  law, 
which  rest  directly  upon  the  statutes  and  decisions  for 
their  sanction. 

§  141.  There  is  no  limit  to  the  number  of  interferences 
to  which  an  application  may  be  subjected;  and  if  a  patent 
is  issued  without  going  through  every  such  proceeding, 

168  Patent  Office  Rule  71.  Bernardin  v.  Seymour,   10  App. 

169  Patent   Office   Rules   49  to      D.  C.  308,  1897. 

55.  m  Arnold  v.  Bishop,  1  McAr- 

170  Revised  Statutes,  Section  thur's  Patent  Cases,  31,  1841; 
4904;  Patent  Office  Rule  93;  United  States  v.  Marble,  2 
United  States  v.  Commissioner  of  Mackey,  12,  1882. 

Patents,  7  O.  G.  603,  1875;  Hisey  172  Patent   Office   Rules   93   to 

v.   Peters,   71   O.   G.   893,    1895;      132,  and  146  to  150. 


CHAP.    VI.]  APPLICATIONS  167 

previously  ordered  by  the  Commissioner,  that  patent  will 
be  void.1™  The  ordinary  rules  of  evidence,  which  are 
applied  in  United  States  equity  courts,  are  used  in  inter- 
ference cases.174  These  include  the  rules  which  relate  to 
dispensing  with  evidence  of  facts  of  public  notoriety.17. 
The  doctrines  of  estoppel  also  apply  in  these  contests, 
in  the  same  manner  in  which  they  apply  in  other  litigious 
proceedings. 176 

Every  witness  who  is  not  a  party  to  the  interference,  is 
protected,  by  a  statute,  from  being  compelled  to  disclose 
any  secret  invention  made  or  owned  by  himself;  177  but 
that  statute  does  not  allow  a  party  to  an  interference  to 
refuse  to  answer  any  question  relevant  to  the  invention  in 
interference.178 

Any  question  of  invention,  or  utility  which  the  Commis- 
sioner may  find  in  a  case  in  interference,  should  be  decided 
by  him,  before  he  decides  the  question  of  priority  in  the 
interference.179  But  evidence  that  some  other  person  pre- 
ceded all  the  parties  to  an  interference,  in  making  the  in- 
vention in  interference,  is  inadmissible.180 

The  first  applicant  in  interference  is  the  senior  party  in 
the  proceeding,  even  where  a  patent  has  been  somehow 
issued  to  a  later  applicant;  and  the  first  applicant  has  a 
'prima  facie  case  of  priority,  which  entitles  him  to  a  decision 
in  his  favor,  unless  it  is  overcome  by  a  proper  weight  of 
evidence  for  a  junior  party.181    A  preponderance  of  evi- 

173  Potter  v.  Dixon,  2  Fisher,  177  Revised  Statutes,  Section 
381,  1863.  4908. 

174  Berry  v.  Stockwell,  9  0.  G.  178Dorman  v.  Keefer,  49  F.  R. 
404,  1876;  Neilson  v.  Bradshaw,  462,  1892. 

16  App.  D.  C.  95, 1900.  179  Oliver  v.  Felbel,  20  App.  D. 

175  Anson  v.  Woodbury,  12  O.  G.      C.  262,  1902. 

1,  1877.  180  Foster  v.  Antisdel,  14  App. 

««  Berry  v.  Stockwell,  9  O.  G.      D.  C.  552,  1899. 
404,  1876.  181  Hunter  v.  Stikeman,  13  App. 


16S  APPLICATIONS  [CHAP.    VI. 

dence  is  enough  for  that  purpose; 182  except  where  the 
senior  party  has  already  received  a  patent  on  the  invention 
in  interference,  in  which  case  the  evidence  for  the  junior 
party  must  be  strong  enough  to  remove  all  reasonable 
doubt.183 

§  141a.  The  decision  of  an  interference,  depends  on 
dates  of  conception,  drawing,  model,  disclosure,  practice, 
and  application  for  a  patent;  and  sometimes  on  the  pres- 
ence or  absence  of  laches. 

A  conception  of  an  invention  occurs,  when  a  person 
definitely  thinks  out  its  theoretical  character,  mode  of  op- 
eration, and  function.  But  the  date  of  that  conception 
cannot  be  fully  proved  by  the  oral  testimony  of  the  con- 
ceiver.184  Where  the  conception  occurred  in  a  foreign 
country,  it  receives  a  conventional  date,  contemporaneous 
with  its  communication  to  some  one  in  the  United  States.185 
A  drawing  of  an  invention  is  admissible  in  evidence  in  an 
interference;  if  it  is  explained  well  enough  to  leave  no 
doubt  of  what  it  represents.  A  model  of  an  invention  has 
the  same  standing  as  a  drawing  in  this  respect.  A  dis- 
closure of  an  invention,  consists  in  making  it  known  to 
another  person,  well  enough  to  preserve  its  plan  for  the 
benefit  of  others,  if  the  inventor  were  to  die  without  doing 
anything  further.186 

D.  C.  219,  1898;  Esty  v.  Newton,  Stocker,  17  App.  D.  C.  317,  1900; 

14  App.  D.  C.  52,  1899;  Miehle  Sharer    v.    McHenry,    19    App. 

v.  Read,  18  App.  D.  C.  128,  1901.  D.  C.  158,  1901. 

182  Wurts  v.  Harrington,  79  184  Mergenthaler  v.  Scudder,  1 1 
0.  G.  337,  1897.  App.  D.  C.  278,  1897;  Petrie  v. 

183  Neilson  v.  Bradshaw,  16  De  Schweinitz,  19  App.  D.  C. 
App.  D.  C.  92,   1900;  Kelly  v.  389,  1902. 

Fynn,  16  App.  D.  C.  573,  1900;  m  Harris  v.  Stern  and  Lotz,  105 

Reichenbach  v.  Kelley,  17  App.  O.  G.  747,  1903. 
D.  C.  333,  1901;  Locke  v.  Boch,  "« Eastman    v.    Houston,    95 

17  App.  D.  C.  83,  1900;  Fefel  v.  O.  G.  2066,  1901. 


CHAP.    VI. J  APPLICATIONS  |li«l 

A  process  is  reduced  to  practice,  when  it  is  successfully 
performed.  A  machine  is  reduced  to  practice,  when  it  is 
constructed,  assembled,  and  adjusted  ready  for  trial  or 
use.187  A  manufacture  is  reduced  to  practice,  when  it  is 
completely  manufactured.  A  composition  of  matter  is 
reduced  to  practice,  when  it  is  completely  composed.  A 
design  is  reduced  to  practice,  when  it  is  embodied  in  the 
thing  or  picture  in  which  it  consists.  A  reduction  to  prac- 
tice, in  order  to  be  credited  to  a  party  in  an  interference, 
must  have  been  performed  by  that  party,  or  by  his  agent 
at  his  instance.188 

§  1416.  An  application  for  a  patent  is  equivalent  to  a 
reduction  to  practice,  in  interferences ;  and  such  an  applica- 
tion is  often  designated  as  a  "  constructive  reduction  to 
practice."  To  be  entitled  to  that  standing,  an  application 
need  not  be  free  from  need  for  amendment ;  189  provided  it 
shows  the  invention  in  interference,  when  properly 
amended.190  In  the  absence  of  other  evidence,  an  inven- 
tion in  interference  takes  date  from  the  date  of  filing  the 
application  in  interference.191  Other  evidence,  which  may 
carry  the  date  of  invention  back  beyond  the  date  of  the 
application  in  interference,  may  consist  of  proof  of  either 
of  the  following  facts: 

The  same  invention  was  described  in  an  earlier  applica- 
tion of  the  same  applicant;  192  provided  that  application 
has  not  been  abandoned.193    That  earlier  application  may 

187  Mason  v.  Hepburn,  13  App.  189  Croskey  v.  Atterbury,  7G 
D.  C.  86,  1898;  Hunter  v.  Stike-     0.  G.  165,  1896. 

man,  13  App.  D.  C.  218,  1898;  190Hulett    v.    Long,    15    App. 

Lindemeyr  v.  Hoffman,  18  App.  D.  C.  284,  1899. 

D.  C.  1,  1901;  Roe  v.  Hanson,  19  191  McCormick  v.  Cleal,  12  App. 

App.  D.  C.  564, 1902.  D.  C.  337,  1898. 

188  Hunter  v.  Stikeman,  13  App.  192  Cain  v.  Park,  14  App.  D.  C. 
D.  C.  226,  1898.  42,  1899. 

193Carty    v.    Kellogg,    7    App. 


170  APPLICATIONS  [CHAP.    VI. 

have  been  the  original  application  for  the  original  patent, 
where  an  application  for  a  reissue  is  in  interference.1'" 

The  same  invent  ion  was  the  subject  of  an  application  for 
a  patent  in  some  foreign  country,  which  affords  similar 
privileges  to  citizens  of  the  United  States;  provided  the 
application  in  this  country,  was  filed  within  twelve  months, 
in  case  of  a  process,  machine,  manufacture,  or  composition 
of  matter,  or  within  four  months,  in  case  of  a  design,  from 
the  earliest  date  at  which  any  such  foreign  application 
was  filed.195 

The  invention  was  reduced  to  practice,  before  the  appli- 
cation in  interference,  or  before  the  application  for  the 
patent  in  interference,  as  the  case  may  be,  was  filed  in  the 
Patent  Office;  196  provided  the  invention  was  not  concealed, 
after  it  was  reduced  to  practice,  until  after  it  was  patented 
to  the  other  party  in  interference.197 

The  invention  was  conceived,  before  the  application  in 
interference,  or  the  application  for  the  patent  in  inter- 
ference, as  the  case  may  be,  was  filed  in  the  Patent  Office;198 
provided  the  conceiver,  if  a  junior  applicant,  is  not  justly 
chargeable  with  laches,  intervening  after  the  earliest  date 
to  which  the  senior  applicant  is  entitled,  and  before  the 
date  of  his  own  reduction  to  practice,  or  his  own  applica- 
tion, as  the  case  may  be.199 

D.  C.   547,    1896;   Ostergren  v.  198  Reed  v.  Cutter,  1  Story,  598, 

Tripler,  17  App.  D.  C.  561,  1901.  1841;   McCormick  Mach.  Co.  v. 

194  Austin  v.  Johnson,  18  App.  Minneapolis  Harvester  Works,  42 
D.  C.  83,  1901.  F.  R.  154,  1890. 

195  32  Statutes  at  Large,  Part  1,  199  Marvel  v.  Decker,  13  App. 
p.  1225,  Ch.  1019,  Section  1.  D.  C.  562,  1898;  GrirTen  v.  Swen- 

198Wurts    v.    Harrington,     10  son,   15  App.  D.  C.   135,   1899; 

App.  D.  C.  149,  1897.  Jackson  v.  Getz,  16  App.  D.  C. 

197  Mason  v.  Hepburn,  13  App.  344,  1900;  Austin  v.  Johnson,  95 

D.  C.  95,  1898;  Thomson  v.  Wes-  O.  G.  2685,  1901;  Miehle  v.  Read, 

ton,  19  App.  D.  C.  380,  1903.  96  O.  G.  426,  1901;  Stapleton  v. 


CHAP.    VI.]  APPLICATIONS  171 

Each  party  in  an  interference  is  entitled  to  invoke  the 
date  of  his  application  as  the  date  of  his  invention;  and  he 
is  also  entitled  to  invoke,  as  the  date  of  his  invention,  the 
date  of  the  earliest  of  the  events,  winch  the  facts  of  the 
case  permit  him  to  invoke,  among  those  winch  are  pre- 
cisely denned  in  the  last  four  paragraphs,  respectively. 

§  141c.  The  facts  defined  in  the  last  of  those  four  para- 
graphs sometimes  include  the  presence  or  absence  of 
laches,  after  the  earliest  date  to  which  a  senior  applicant 
is  entitled,  and  before  the  date  of  the  junior  applicant's 
reduction  to  practice,  or  the  date  of  his  application  for  a 
patent,  as  the  case  may  be.  Any  considerable  delay  during 
that  time,  constitutes  laches;  unless  it  is  accounted  for  by 
facts  which  exclude  the  theory  of  neglect.  The  fact  that 
the  junior  applicant  was  diligently  at  work  on  some  other 
invention  or  worthy  enterprise,  during  that  time,  does 
not  exclude  the  theory  of  neglect.200  Indeed,  nothing  but 
impossibility  can  be  relied  on  to  prevent  delay,  during 
the  time  in  view,  from  being  held  to  constitute  such  laches, 
as  will  deprive  a  junior  applicant  of  the  date  of  his  con- 
ception as  the  date  of  his  invention. 

But  laches  is  not  chargeable  to  the  junior  party  to  an 
interference,  on  account  of  any  delay  which  occurred  be- 
fore the  earliest  date  to  which  the  other  party  is  entitled  ;201 
nor  on  account  of  any  mere  delay  which  occurred  after  his 
reduction  to  practice  and  before  his  application; 202  nor  on 
account  of  any  delay  which  occurred  after  his  application 
was  filed  in  the  Patent  Office.    And  laches  is  not  charge- 

Kinney,  96  0.   G.   1432,   1901;  201  Yates  v.  Huson,  8  App.  D.  C. 

Wyman  v.  Donnelly,  104  0.  G.  93,  1896. 

310,  1903.  202  Wurts    v.     Harrington,     79 

200Croskey    v.     Atterbury,    9  O.G.338, 1897;Loomis*>.  Hauser, 

App.  D.  C.  208, 1896;  Stapleton  v.  99  O.  G.   1172,   1902;  Oliver  v. 

Kinney,  18  App.  D.  C.  394,  1901.  Felbel,  20  App.  D.  C.  262, 1902. 


172  APPLICATIONS  [CHAP.    VI. 

able  to  the  senior  applicant  in  interference  on  account  of 
any  delay  whatever. 

Dates  of  drawing,  model,  and  disclosure,  are  significant 
in  interferences,  only  as  they  help  to  prove  the  dates  of  con- 
ception; or  relate  to  the  question  of  laches  of  the  junior  ap- 
plicant, after  his  conception,  and  before  his  application  or 
reduction  to  practice. 

The  question  of  priorities  as  between  interfering  patents 
and  interfering  inventions  is  so  thoroughly  discussed  in 
the  cases  of  Laas  v.  Scott,203  and  Automatic  Weighing 
Machine  Co.  v.  Pneumatic  Scale  Corporation  204  that  the 
reader  is  referred  to  these  cases  as  a  complete  exposition 
of  the  entire  law  on  the  subject. 

§  141d.  And  any  party  aggrieved  by  a  decision  of  the 
Commissioner  of  Patents,  in  any  interference  case,  may 
appeal  therefrom  to  the  Court  of  Appeals  of  the  District  of 
Columbia.205  The  statute  which  provides  for  such  appeals, 
is  constitutional,  for  the  decisions  appealed  from,  are  ju- 
dicial.206 Such  an  appeal  is  confined  to  the  final  decision  of 
the  Commissioner  on  the  question  of  priority; 207  except 
where  the  court  finds  that  there  is  no  interference  to  be 
decided.208  Where  all  the  tribunals,  which  passed  on  a 
particular  interference  in  the  Patent  Office,  reached  the 
same  conclusion  thereon;  the  court  will  reverse  that  con- 

203  Laas  v.  Scott,  161  F.  R.  122,      0.  G.  1010,  1894;  Hisey  v.  Peters, 

1908.  71  0.  G.  893, 1895;  Dodge  v.  Fow- 

204  Automatic  Weighing  Ma-  ler,  11  App.  D.  C.  592,  1897;  Hill 
chine  Co.  v.  Pneumatic  Scale  v.  Hodge,  12  App.  D.  C.  528, 1898; 
Corporation,    166    F.    R.    288,  Hulett  v.  Long,  89  O.  G.  1141, 

1909.  1899;  Newton  v.  Woodward,  16 

205  27  Statutes  at  Large,  Ch.  74,  App.  D.  C.  572, 1900;  Schupphaus 
Section  9,  p.  436.  v.  Stevens,  17  App.  D.  C.  555, 

208  United  States  v.  Duell,  172      1901. 
U.  S.  576,  1899.  2°8  Bechman  v.  Wood,  89  O.  G. 

207  Westinghouse  v.  Duncan,  66      2459,  1899. 


CHAP.    VI. J  APPLICATIONS  173 

elusion,  only  in  case  a  very  clear  error  is  found  therein.209 
Even  after  the  Court  of  Appeals  has  decided  an  inter- 
ference; the  Commissioner  may  consider  any  question  of 
non-patentability  in  the  subject  of  the  interference,  and 
may  still  refuse  a  patent  to  the  successful  interferor,  on 
the  ground  of  want  of  patentability  to  any  person.210 

§  142.  No  decision  of  the  Commissioner  of  Patents,211 
or  the  Courts  of  Appeals  of  the  District  of  Columbia, 21- 
in  any  interference  case,  is  pleadable  as  res  judicata  in  any 
action  in  any  court; 213  but  such  a  decision  will  be  followed 
by  all  the  courts,  unless  it  is  shown  to  be  wrong,  by  evi- 
dence which  puts  the  point  beyond  a  reasonable  doubt.214 
Where  such  a  decision  is  made  between  two  or  more  ap- 
plications, a  patent  is  granted  to  the  inventor  decided  to 
be  first,  and  no  patent  is  granted  to  either  of  the  others. 
If  it  is  made  between  an  application  and  a  patent,  and  is 
made  in  favor  of  the  application,  the  Commissioner  will 
grant  a  patent  thereon,  but  he  cannot  recall  the  patent 

209  Glenn   v.   Adams,    12   App.  Roth  v.  Harris,   168  F.  R.  279, 

D.  C.  175, 1898;  McBerty  v.  Cook,  1909. 

16  App.  D.  C.  136,  1900.  212  Bernardin    v.    Northall,    78 

2*°  Hill  v.  Hodge,  12  App.  D.  C.  0.  G.  1742,  1897. 

528,  1898.  213  Eck  v.  Kutz,  132  F.  R.  758, 

211  Union  Paper  Bag  Machine  1904;    Computing   Scale   Co.    v. 

Co.  v.  Crane,  1  Bann.  &  Ard.  494,  Standard  Computing  Scale  Co., 

1874;  Gloucester  Isinglass  Co.  v.  195  F.  R.  508,  1912. 

Brooks,  19  F.  R.  427,  1884;  Hubel  214  Morgan  v.  Daniells,  153  U.  S. 

v.  Tucker,  24  F.  R.  701,  1885;  123,    1894;  Hisey  v.   Peters,   71 

Kirk  v.  Du  Bois,  33  F.  R.  252,  O.  G.  894,  1895;  Standard  Car- 

1887;  John  R.  Williams  Co.  v.  tridge  Co.  v.  Peters  Cartridge  Co., 

Du  Brul  &  Peters  Mfg.  Co.,  107  77  F.  R.  630,  1896;  R.  Thomas  & 

F.  R.  293,  1901;  Davis  &  Roesch  Sons  Co.  v.  Electric  Porcelain  & 

T.    C.    Co.    v.    National    Steam  Mfg.  Co.,  Ill  F.  R.  929,  1901; 

SpecialtyCo.,164F.R.  191, 1908;  Roth  v.  Harris,  168  F.  R.  279, 

Turner  Brass  Works  v.  Appliance  1909. 
Mfg.  Co.,  164  F.  R.  195,  1908; 


174  APPLICATIONS  [CHAP.    VI. 

already  issued.  In  such  a  case,  the  rival  inventors  may 
litigate  their  interference  controversy  anew,  on  the  equity 
side  of  any  United  States  District  Court  which  has  or  can 
acquire  jurisdiction  of  the  parties.215  That  kind  of  litiga- 
tion constitutes  the  subject  of  the  chapter  on  interfering 
patents;  the  thirteenth  chapter  of  this  book.  Or  the  ques- 
tion of  priority  between  the  two  inventors  may  be  liti- 
gated afresh  in  any  infringement  suit,  brought  by  one 
of  them  against  the  other.  If,  in  such  a  case  as  that  under 
present  consideration,  it  had  happened  that  the  successful 
applicant  had  filed  his  application  before  the  interfering 
patent  was  granted,  that  patent  would  not  have  been 
granted  at  all,  unless  the  Patent  Office  decision  on  the 
interference  had  been  reversed  by  some  higher  authority. 
In  that  event,  the  successful  applicant  -would  not  have 
been  liable  to  any  interference  suit,  nor  any  infringement 
suit,  brought  against  him  by  his  rival;  for  his  rival  would, 
in  that  event,  have  no  patent  upon  which  to  base  a  suit 
of  either  of  those  kinds.  For  this  reason,  as  well  as  for 
others,  every  inventor  who  desires  to  secure  a  patent  for 
an  invention,  should  make  his  application  therefor  soon 
after  making  that  invention.  This  is  the  more  urgent 
since  the  abolition  of  caveats  as  stated  in  the  next  section, 
as  the  inventor  is  now  deprived  of  that  means  of  prevent- 
ing the  issuance  of  an  interfering  patent. 

§  143.  Caveats  have  since  the  publication  of  the  Fourth 
Edition  of  this  book  been  abolished216  and  are  now  of  little 
more  than  academic  interest,  but  for  the  sake  of  complete- 
ness the  discussion  of  the  subject  is  retained  in  this  edition. 
"A  caveat  is  a  document  in  which  an  inventor  states  the 
function,  and  the  distinguishing  characteristics,  of  the 
invention  to  which  it  refers,  and  prays  protection  for  his 

215  Revised  Statutes,  Section  2W  Act  of  January  25,  1910,  36 
4918.  Statutes,  843,  Chap.  414. 


CHAP.    VI.]  APPLICATIONS  17.") 

right  thereto,  until  he  shall  have  matured  that  invention. 
A  caveat  remains  in  force  only  one  year;  and  while  it  is  in 
force,  its  only  statutory  function  is  to  prevent  the  issuing 
of  any  patent  to  another,  for  the  same  invention,  until 
after  the  caveator  has  notice  of  the  interfering  application, 
and  has  thus  had  an  opportunity  to  file  an  application 
himself,  and  so  delay  the  issuing  of  a  patent  to  his  compet- 
itor until  an  interference  proceeding  in  the  Patent  Office 
shall  have  decided  the  question  of  priority.217  If  an  in- 
vention is  fully  described  in  a  caveat,  then  that  caveat 
will  constitute  evidence  showing  that  invention  to  have 
been  made  at  least  as  early  as  the  caveat  was  filed.  This, 
however,  is  an  incidental  and  not  a  statutory  function 
of  such  a  document,  and  it  cannot  be  performed  by  any 
caveat  which  is  not  complete  enough  in  its  description 
to  enable  a  skillful  mechanic,  without  inventing  anything 
himself,  to  construct  a  specimen  of  the  invention  to  which 
the  caveat  refers.  But  even  where  a  caveat  does  not  reach 
that  standard,  it  constitutes  evidence  that  the  invention 
had  reached  the  stage  of  development  shown  in  the  ca- 
veat, at  the  time  the  caveat  was  executed.218 

"Omission  to  file  a  caveat  does  not  impair  the  ultimate 
rights  of  an  inventor,219  and  omission  to  consider  a  caveat 
does  not  invalidate  a  patent  granted  to  another  in  pur- 
suance of  the  oversight.220 

"But  whether  an  immature  invention  is  provisionally 
protected  by  a  caveat  or  not,  it  should  not  be  made  the 
subject  of  an  application  for  a  patent  until  it  reaches 

217  Revised  Statutes,  Section  219  Heath  v.  Hildreth,  1  Mc- 
4902;  32  Statutes  at  Large,  p.  Arthur's  Patent  Cases,  25, 
1225,  Ch.  1019,  Section  4;  Bell  v.      1841. 

Daniels,  1  Fisher,  372,  1858.  220  Cochrane   v.    Waterman,    1 

218  Jones  v.  Wetherell,  1  Mc-  McArthur's  Patent  Cases,  59, 
Arthur's  Patent  Cases,  413, 1855.      1844. 


170  APPLICATIONS  [CHAP.   VI. 

maturity;  for  it  has  happened  in  the  past,  and  may  hap- 
pen hereafter,  that  a  patent,  granted  on  an  application 
based  on  an  immature  invention,  is  not  strong  enough  or 
broad  enough  to  give  any  valuable  exclusive  right,  while 
being  significant  enough  to  weaken  or  to  narrow  the 
operation  of  any  subsequent  patent  granted  to  the  same 
inventor,  on  a  mature  invention,  in  the  same  department 
of  the  useful  arts." 

§  144.  No  appeal  lies  from  any  decision  of  the  Court  of 
Appeals  of  the  District  of  Columbia,  on  an  appeal  to  that 
tribunal  from  the  Commissioner  of  Patents.221  But  an 
appeal  does  lie  from  any  decision  of  any  United  States 
District  Court,  or  of  the  Supreme  Court  of  the  Dis- 
trict of  Columbia,  on  any  bill  in  equity  which  may  be 
filed  to  compel  the  issuance  of  a  patent,  after  an  unsuc- 
cessful appeal  to  the  Court  of  Appeals  of  the  District  of 
Columbia,  from  the  rejection  of  an  application  by  the 
Commissioner  of  Patents.  Where  such  a  bill  is  filed  and 
adjudicated  in  some  District  Court  of  the  United  States, 
an  appeal  lies  from  its  decision  to  the  Circuit  Court  of 
Appeals  of  the  circuit  to  which  that  District  Court  be- 
longs.222 And  where  such  a  bill  is  filed  and  adjudicated 
in  the  Supreme  Court  of  the  District  of  Columbia,  an  ap- 
peal lies  to  the  Court  of  Appeals  of  the  District  of  Colum- 
bia.223 But  no  appeal  lies  in  such  a  case,  from  the  latter 
tribunal  to  the  Supreme  Court  of  the  United  States.224 

§  145.  An  application  for  a  patent  may  be  abandoned. 
That  abandonment  may  be  actual,  or  it  may  be  construc- 
tive. The  facts  which  constitute  an  actual  abandonment 
of  an  application,  may  also  constitute  an  actual  abandon- 

221  Rousseau  v.  Brown,  104  0.  G.  224  Durham  v.  Seymour,  161 
1122,  1903;  Judic.  Code,  250,  251.  U.  S.  235,  1896;  Frasch  v.  Moore, 

222  Judicial  Code,  Section  128.  211    U.   S.    1,    1908;   Johnson    v. 

223  27  Statutes  at  Large,  Ch.  74,  Mueser,  212  U.  S.  283,  1909;  Ju- 
Section  7,  p.  435.  dicial  Code  Sections  250,  251. 


CHAP.   VI.]  APPLICATIONS  177 

ment  of  the  invention  covered  thereby;  and  a  constructive 
abandonment  of  an  application,  may  or  may  not  work 
a  constructive  abandonment  of  the  invention. 

Actual  abandonment  of  an  application  does  not  always 
follow  from  the  fact  that  the  applicant  withdrew  it  from 
the  Patent  Office.  If,  when  withdrawing  it,  he  intended 
to  file  a  new  application  for  the  same  invention,  and  ac- 
cordingly does  so,  the  two  are  held  to  constitute  one 
continuous  application  within  the  meaning  of  the  law.226 
This  doctrine  applies,  even  if  the  new  application  is  not 
filed  till  long  after  the  old  one  was  withdrawn,  provided 
there  was  no  laches  chargeable  to  the  applicant  on  account 
of  the  delay.227  When  the  two  applications  are  continuous 
the  two  years'  public  use  or  sale  which  may  avoid  the 
patent  must  be  reckoned  from  the  presentation  of  the 
first  application,  and  not  from  the  filing  of  subsequent 
applications  or  amendments.228  When,  however,  the  first 
application  is  abandoned,  a  contrary  rule  prevails.229 

But  this  principle  is  not  to  be  construed  as  holding  that 
a  subsequent  patent  for  an  invention  described  but  not 
claimed  in  an  earlier  patent  to  the  same  patentee  may  be 
a  continuation  of  the  former.230 

And  where  an  application  covers  two  inventions,  one  of 

225  Hayes  Young  Tie  Plate  Co.  St.  Louis  Transit  Co.,  137  F.  R. 

v.  St.  Louis  Transit  Co.,  137  F.  R.  80,  1905;  Victor  Talking  Machine 

80,  1905.  Co.  v.  Am.  Graphaphone  Co.,  145 

228  Godfrey  v.  Eames,  1  Wallace,  F.   R.  350,   1906;  Corrington  v. 

317,   1863;  International  Crown  Westinghouse  Air  Brake  Co.,  178 

Co.  v.  Richmond,  30  F.  R.  779,  F.  R.  711,  1910. 

1886;  Dederick  v.  Fox,  56  F.  R.  229  Hayes- Young,   etc.,   Co.    v. 

715,  1892;  Clark  Blade  &  Razor  St.  Louis  Transit  Co.,  137  F.  R. 

Co.  v.  Gillette  Safety  Razor  Co.,  80,  1905. 

194  F.  R.  421,  1912.  23°  Model  Bottling  Machinery 

227  Howes  v.  McNeal,  3  Bann.  &  Co.  v.  Anheuser-Busch  Brewing 
Aid.  376,  1878.  Ass'n,  190  F.  R.  573,  1911. 

228  Hayes- Young,    etc.,    Co.    v. 


L78  APPLICATIONS  |(  HAP.    VI. 

which  is  withdrawn  therefrom  by  division,  and  made  the 
subject  of  a  divisional  application;  that  new  application 
relates  back  to  the  original  application  from  which  it  was 
carved,  and  is  not  chargeable  with  any  diminution  of 
significance,  on  account  of  the  transaction.231 

Nor  does  actual  abandonment  of  an  application  neces- 
sarily follow  from  the  fact  that  it  was  rejected  by  the 
Patent  Office,  and  then  allowed  to  lie  dormant  by  the 
applicant.  If,  in  such  a  case,  the  applicant  always  expected 
to  secure  a  patent,  either  on  the  original  application  or  on 
another,  and  if,  without  laches,  he  made  and  prosecuted 
another  application  for  the  same  invention,  and  secured 
a  patent  thereon;  the  two  applications  are  considered,  in 
the  eye  of  the  law,  to  be  one.232 

Laches,  if  it  intervenes,  between  a  withdrawn  or  re- 
jected application  and  a  new  application  covering  the  same 
invention,  will,  however,  be  fatal  to  any  claim  of  conti- 
nuity.233 It  will  constitute  evidence  that  the  first  applica- 
tion was  actually  abandoned,  and  equally  good  evidence 
of  the  actual  abandonment  of  the  invention  itself.234 

Where  an  inventor  makes  two  original  applications  for  a 
patent,  and  afterward  withdraws  one  of  them;  he  does  not 
thereby  abandon  the  invention  described  therein.235 

§  146.  Constructive  abandonment  of  an  application 
occurs  whenever  one  year  intervenes  between  the  filing  of 
the  application  and  its  being  made  complete  enough  to  en- 

231  Stirling  Co.  v.  St.  Louis  Pigeon  Co.  v.  Clay-Bird  Co.,  34 
Brewing    Ass'n,    79    F.    R.    80,      F.  R.  334,  1887. 

1897.  233  Bevin  v.  Bell  Co.,  9  Blatch. 

232  Smith  v.  Dental  Vulcanite  61,  1871;  Weston  v.  White,  13 
( '<>.,  93  U.  S.  500,  1876;  Blandy  v.      Blatch.  452,  1876. 

Griffith,  3  Fisher,  617,  1869;  Gra-         23*  Planing     Machine     Co.     v. 
ham   v.  McCormick,  5  Bann.  &      Keith,  101  U.  S.  484,  1879. 
Aid.   244,   1880;  Ligowski  Clay-  235  Edison  v.   American  Muto- 

scope  Co.,  110  F.  R.  662,  1901. 


CHAP.    VI. J  APPLICATIONS  I7'.» 

title  it  to  examination,  according  to  the  rules  of  the  Patent 
Office;  and  such  an  abandonment  also  occurs  if  the  appli- 
cant allows  one  year  to  pass  without  regularly  prosecuting 
his  application,  after  any  particular  action  is  taken  thereon 
by  the  Patent  Office,  and  notified  to  him;  provided,  in 
either  case,  the  Commissioner  of  Patents  is  not  convinced 
that  the  delay  was  unavoidable.236  If  he  is  so  convinced  he 
may  condone  the  delay  by  granting  a  patent;  and  if  he 
grants  a  patent,  his  decision  on  the  point  is  conclusive. 237 

So,  also,  constructive  abandonment  of  his  application 
occurs  when  an  applicant  fails  to  pay  the  final  fee  within 
six  months  from  the  time  at  which  a  patent  is  allowed,  and 
notice  of  such  allowance  is  sent  to  him  or  to  his  agent.238 

The  period  of  time,  no  matter  how  long,  consumed  by 
an  applicant  in  the  prosecution  of  his  application,  cannot, 
however,  be  construed  as  an  abandonment  either  of  his 
invention  or  of  his  application,  nor  can  it  work  to  his  prej- 
udice provided  he  complies  with  the  regulations  of  the 
Patent  Office  in  regard  to  the  limitations  of  time  of  tak- 
ing such  action  in  respect  to  his  application  as  may  be 
required.239  Such  a  record  does  not,  however,  improve 
the  chances  of  the  patent  before  the  courts,  especially 
where  the  art  has  made  extensive  progress  while  the  ap- 
plication was  pending  in  the  Patent  Office.240 

§  147.  Constructive    abandonment   of   an   application 

236  Revised  Statutes,  Section  v.  St.  Louis  Transit  Co.,  137  F.  It. 
4894;  as  amended  in  29  Statutes    '  80,  1905. 

at  Large,  Ch.  391,  Section  4;  Kirk  238  Revised       Statutes,       Sec- 

v.   Commissioner  of  Patents,  37  tion  4885,  as  amended  35  Stat. 

O.  G.  451,  1885;  Ex  parte  Mes-  246. 

senger,  78  0.  G.  1903,  1897.  239  Columbia  Motor  Car  Co.  v. 

237  M'Millin  v.  Barclay,  5  C.  A.  Duerr  &  Co.,  184  F.  R.  893, 
Fisher,  199,  1871;  contra,  holding  1911. 

the  decision  merely  presumptively         See  Section  92. 

correct,   Hayes- Young,  etc.,  Co.  '-'"'  Bestonville   M.   <k    F.   Pas- 


ISO  APPLICATIONS  [CHAP.  VI. 

will  work  constructive  abandonment  of  the  invention 
covered  thereby,  where  the  abandonment  of  the  applica- 
tion arose  from  either  of  the  causes  stated  in  the  first 
paragraph  of  Section  146;  if  no  new  application  is  filed  soon 
enough  to  independently  avoid  the  statute  relevant  to 
public  use  or  sale  more  than  two  years  before  application 
for  a  patent; 241  and  probably,  also  soon  enough  to  in- 
dependently avoid  those  causes  of  constructive  aban- 
donment of  inventions,  which  are  stated  in  Section  104a 
of  this  book. 

But  constructive  abandonment  of  an  application,  aris- 
ing out  of  the  cause  stated  in  the  last  paragraph  of  Sec- 
tion 146,  will  not  put  into  operation  the  statute  relevant 
to  public  use  or  sale  more  than  two  years  before  applica- 
tion;242 and  probably  will  not  put  into  operation,  either 
of  those  causes  of  constructive  abandonment  of  inventions, 
to  which  Section  104a  of  this  book  is  devoted. 

§  148.  Patents  are  authorized  by  law,  only  on  compli- 
ance with  the  statutory  prerequisites  to  their  issue.  The 
Commissioner  has  therefore  no  jurisdiction  to  grant  any 
patent,  except  where  all  those  prerequisites  have  been 
substantially  performed.  If  he  inadvertently  grants  a 
patent  in  any  other  case,  he  exceeds  his  jurisdiction,  and 
it  is  therefore  open  to  every  person  who  is  sued  as  an  in- 
fringer of  that  patent,  to  successfully  defend  against  such 
an  action,  by  pleading  and  proving  the  particular  fault  or 
omission  with  which  the  applicant  was  chargeable.243 

senger  Ry.  Co.  v.  McDuffee,  185  242  Ligowski  Clay-Pigeon  Co.  v. 

F.  R.  788,  1910.  American  Clay-Bird  Co.,  34  F.  R. 

241  Lindsay  v.  Stein,  10  F.  R.  328,  1888. 

913, 1882;  Western  Electric  Co.  v.  243  Grant  v.  Raymond,  6  Peters, 

Sperry  Electric  Co.,  58  F.  R.  191,  218,   1832;  Parks  v.  Booth,  102 

1893;  Lay  v.  Indianapolis  Brush  U.  S.  101,  1880;  Ransom  v.  New 

&  Broom  Mfg.  Co.,  120  F.  R.  836,  York,  1  Fisher,  257,  1856. 

1903.  See  Section  440. 


CHAPTER   VII 


LETTERS    PATENT 


149.  No    exclusive    right    to    in- 

ventions at  common  law. 
149a.  Exclusive  possession  by  se- 
crecy. 

150.  Constitutional         exclusive 

right  to  inventions  in  the 
United  States. 

151.  Patents  are  property. 

152.  Dignity  of  property  in  pat- 

ents. 
152a.  Continuation  of  the  same 
subject. 

153.  Patents     are     not     odious 

monopolies. 

155.  Patent    rights    are    beyond 

State  interference. 

156.  Patent  rights  are  not  sub- 

ject to  common-law  execu- 
tions, but  may  be  sub- 
jected to  creditors'  bills  in 
equity. 

157.  Patent  rights  are  as  exclu- 

sive of  the  government,  as 
they  are  of  any  citizen. 

158.  Patents  do  not  cover  speci- 

mens purchased  of  the  in- 
ventor, or  made  with  his 
knowledge  and  consent, 
before  application  there- 
for. 

159.  The  foregoing  rule  has  no 

application  to  patents  for 
processes. 


160.  Territorial  scope  of  United 

States  patents. 

161.  Operation  of  United  States 

patents  on  the  decks  of 
ships. 

162.  Duration  of  patents. 

163.  Duration  of  United  States 

patents  for  inventions  first 
patented  in  a  foreign  coun- 
try, according  to  the  stat- 
ute of  1870. 

170.  Beginning  of  the  terms  of 

United  States  patents. 

171.  To  whom  letters  patent  are 

granted  by  the  govern- 
ment. 

172.  Letters  patent  as  documents. 

173.  The  specification. 

174.  The  description. 

175.  The  description. 

176.  The  claim  or  claims. 

177.  The  claim  or  claims. 

177a.  Generic  claims  and  specific 
claims. 

178.  Particularity  in  descriptions 

and  claims,  are  conditions 
precedent  to  validity. 

179.  Questions  of  sufficiency  of 

particularity  of  descrip- 
tions and  claims,  are  ques- 
tions of  fact,  and  not  of 
law. 

181 


182 


LETTERS    PATENT 


[CHAP.    VIT. 


180.  Plurality  of  inventions  in  a 

single  letters  patent. 
180a.  Double  patenting. 

181.  Construction  of  letters  pat- 

ent. 

182.  Claims  to  be  construed  in  the 

light  of  descriptions. 
182a.     Construction     of     claims 
which    employ    reference 
letters  or  numerals. 

183.  Construction    of    functional 

claims. 

184.  Claims  construed  in  the  light 

of  the  prior  state  of  the 
same  art. 
184a.  The  prior  state  of  other  arts. 

185.  Proper    liberality    of    con- 

struction. 
185a.  Breadth  of  construction  as 
governed  by  extent  of  use 
of  patent. 


I  Mi.  I  'ii  >per  st  rit*t  iicss  of  construc- 
tion. 

186a.  Construction  in  the  light  of 
acquiescence  on  part  of 
owner  of  patent. 

187.  Construction  in  the  light  of 

application  papers. 
187a.  Patent  Office  limitations. 

188.  Construction  in  the  light  of 

contemporaneous        stat- 
utes. 

189.  Questions    of    construction 

are  questions  of  law,  and 
not  of  fact. 

190.  Letters  patent  presumed  to 

be  for  same  invention  as 
the  application  therefor. 

191.  Letters  patent  are  construc- 

tive notice  of  their  con- 
tents to  every  person. 
191a.  Taxation  of  patents. 


§  149.  No  inventor  has  any  special  right  to  his  inven- 
tion at  common  law.1  This  is  not  a  virtue  in  that  law.  It 
is  an  imperfection;  an  omission.  That  omission  is  due  to 
the  fact  that  the  common  law  came  into  being  in  the 
middle  ages,  and  in  England.  New  and  useful  inventions 
were  seldom  produced  in  those  ages,  and  most  of  those 
which  were  produced,  were  produced  in  Italy  or  on  the 
continent  of  Europe.  There  was  little  or  no  occasion  or 
opportunity  in  England,  for  the  creation  or  recognition 
of  any  exclusive,  or  otherwise  paramount,  customary 
right  in  inventions.  Even  in  those  countries  where  new 
and  useful  things  were  more  frequently  invented,  their 


1  Brown  v.  Duchesne,  19  How- 
ard, 195,  1856;  Dable  Grain 
Shovel  Co.  v.  Flint,  137  U.  S.  41, 


1890;  Brill  v.  St.  Louis  Car  Co.,  80 
F.  R.  910,  1897. 


CHAP.    VII.]  LETTERS   PATENT  183 

inventors  were  oftener  persecuted  as  heretics  than  re- 
warded as  benefactors.  Despotic  kings  were  wont,  in 
many  countries,  to  confer  monopolies  upon  their  favorites, 
regardless  of  any  meritorious  right  to  the  things  monop- 
olized; and  it  sometimes  happened,  in  England  and  else- 
where, that,  in  pursuance  of  this  practice,  a  monopoly 
of  an  invention  was  granted  to  its  true  inventor.  Such  a 
grant,  however,  was  always  a  matter  of  kingly  grace, 
and  never  a  matter  of  legal  right.  In  the  reign  of  James 
the  First,  the  English  parliament  limited  this  exercise 
of  royal  prerogative  to  cases  of  inventions,  and  thus  laid 
the  foundation  of  the  patent  laws  of  England.  The  limit- 
ing statute  did  not  purport  to  confer  upon  inventors,  any 
inchoate  right  which  they  might  perfect  and  make  abso- 
lute by  proceeding  in  any  manner  pointed  out  by  law.  It 
recognized  the  power  of  the  king  to  secure  to  any  inventor, 
an  exclusive  right  to  his  invention,  if  his  royal  pleasure 
prompted  him  so  to  do.2  But  the  exercise  of  that  power 
was  so  infrequent  for  more  than  a  century,  that  Blackstone, 
in  his  Commentaries  on  the  Laws  of  England,  devoted 
but  one  sentence  to  the  branch  pertaining  to  patents  for 
inventions. 

§  149a.  Some  inventors  sometimes  attempt  to  reap 
reward  for  their  inventions  by  means  of  secrecy,  instead 
of  by  means  of  patents.  Such  attempts  are  legitimate; 
but  they  are  not  applicable  to  designs,  and  are  seldom 
applicable  to  machines  or  manufactures.  Where  an  in- 
vention consists  in  a  process,  secrecy  may  be  applicable, 
if  it  can  be  maintained;  and  it  may  also  be  applicable  in 
the  case  of  a  composition  of  matter,  where  the  ingredients 
thereof  are  not  apt  to  be  ascertained  by  analysis  of  the 
resulting  product.  But  inventors  can  seldom  practice 
their  inventions,  on  a  profitable  scale,  without  any  as- 
2  McKeever  v.  United  States,  14  Court  of  Claims,  417,  187S. 


184  LETTERS    PATENT  [CHAP.    VII. 

sistance  from  other  persons;  and  such  assistance  can  sel- 
dom be  rendered,  without  an  adequate  knowledge  of  the 
invention  in  which  it  is  employed.  For  these  reasons  se- 
crecy is  liable  to  be  lost  by  betrayal;  and  betrayal  is  a 
risk  that  inventors  can  seldom  afford  to  take.  Where  an 
inventor  does  take  that  risk,  and  does  incur  betrayal  of 
his  secret  invention,  he  naturally  hopes  to  get  some  remedy 
in  some  court.  To  that  end,  he  may  begin  an  action  at 
law  for  damages,  for  breach  of  the  express  or  the  implied 
contract,  which  was  broken  by  the  betrayal.  But  that 
remedy  is  valueless,  where  the  betrayer  has  no  property 
upon  which  to  levy  an  execution.  An  action  in  equity, 
to  restrain  the  betrayer  from  all  further  betrayal  of  the 
unpatented  secret,  would  probably  be  entertained;  but 
it  would  probably  be  ineffective  to  prevent  the  secret 
from  becoming  generally  known  among  competitors. 
And  no  action  at  law  or  in  equity,  could  be  maintained 
against  a  competitor,  for  practicing  a  betrayed  invention, 
unless  he  was  a  party  to  the  betrayal. 

§  150.  In  the  United  States  of  America,  the  superior 
right  of  an  inventor  to  his  invention  has  a  far  better  foun- 
dation than  could  be  furnished  by  the  prerogative  of  any 
king.  That  foundation  is  the  consent  of  the  people  of  the 
United  States:  a  consent  primarily  expressed  in  the  Fed- 
eral Constitution,  and  elaborately  defined  in  the  Federal 
Statutes.  The  Constitution  was  established  as  the  su- 
preme law  of  the  United  States,  on  the  twenty-first  day 
of  June,  1788.  It  conferred  power  upon  Congress  to 
promote  the  progress  of  the  useful  arts,  by  securing,  for 
limited  times,  to  inventors,  the  exclusive  right  to  their 
respective  inventions.3  In  exercise  of  that  power,  Con- 
gress, on  the  tenth  day  of  April,  1790,  enacted  the  first 
Federal  statute  on  the  subject;  and  provided  therein  that 
3  Article  1,  Section  8. 


CHAP.    VII.]  LETTERS    PATENT  1 85 

the  exclusive  right  in  contemplation,  should  be  secured 
to  the  respective  inventors,  by  means  of  a  written  grant 
from  the  United  States,  to  be  named  letters  patent.1 
It  is  the  office  of  this  chapter  to  explain  the  nature,  the 
extent,  and  the  duration  of  the  right  secured  by  such  a 
document ;  to  outline  the  general  form  and  necessary  char- 
acteristics of  such  a  document  itself;  and  to  set  forth  the 
rules  by  which  such  documents  are  properly  construed. 

§  151.  Patent  rights  are  property,5  and  the  very  essence 
of  the  rights  conferred  by  the  patent  is  the  exclusion  of 
others  from  its  use.6  The  owner  of  a  patent  is  both  legally 
and  equitably  entitled  to  the  same  protection  for  that 
property,  that  the  owner  of  any  other  species  of  property 
may  enjoy;7  and  he  cannot  be  constitutionally  deprived 
of  that  property  without  due  process  of  law.8  Due  proc- 
ess of  law  includes  the  constitutional  judgments  and  de- 
crees of  courts;  but  it  does  not  include  any  act  of  Con- 
gress, or  of  any  other  legislature.9  Patent  rights,  once 
vested,  are  therefore  incapable  of  being  divested  by  act 

4 1  Statutes  at  Large,  Ch.  7,  Eastern  Paper  Bag  Co.,  210  U.  S. 

p.  109.  405,    1908;   Herman  v.   Youngs- 

5  Brown  v.  Duchesne,  19  How-  town  Car  Mfg.  Co.,  191  F.  R.  579, 
ard,   195,  1856;  Seymour  v.  Os-  1911. 

borne,    11    Wallace,    533,    1870;  '  McCormick  Machine  Co.   v. 

Consolidated    Fruit    Jar    Co.    v.  Aultman,   169  U.  S.  609,   1898; 

Wright,  94  U.  S.  96,  1876;  Cam-  Thomson   v.    Citizens'    National 

meyer  v.  Newton,  94  U.  S.  226,  Bank,  53  F.  R.  252,  1892;  West- 

1876;    James    v.    Campbell,    104  inghouse  Air-Brake  Co.  v.  Chi- 

U.  S.  357, 1881;  Marsh  v.  Nichols,  cago  Brake  &  Mfg.  Co.,  85  F.  R. 

128  U.  S.  612,  1888;  Continental  795,  1898. 

Paper  Bag  Co.  v.  Eastern  Paper  8  Fifth  Amendment  to  the  Con- 
Bag  Co.,  210  U.  S.  405,  1908.  stitution. 

See   Section   290   as   to   their  9  Barron  v.  Baltimore,  7  Peters, 

status    under    the    Bankruptcy  247,  1833;  Kent's  Commentaries, 

Act.  Lecture  24,  p.  13;  Taylor  v.  Por- 

6  Continental  Paper  Bag  Co.  v.  ter,  4  Hill  (N.  Y.),  147,  1843. 


L86  LETTERS    PATENT  [CHAP.    VII. 

of  Congress,10  except  of  course  by  the  exercise  of  the  power 
of  eminent  domain.11  Nor  can  Congress  do  indirectly, 
that  which  it  is  forbidden  to  do  witli  directness.  It  cannot 
destroy  nor  seriously  impair  the  value  of  a  patent  right, 
under  the  guise  of  altering  or  repealing  the  existing  reme- 
dies applicable  to  its  enforcement,  any  more  than  it  can 
so  treat  any  other  kind  of  property.12 

The  question  of  just  what  considerations  determine  the 
situs  of  a  patent  right  has  apparently  not  yet  been  di- 
rectly passed  upon  or  otherwise  clearly  stated.  On  this 
point,  however,  reference  may  be  had  to  the  cases  cited 
in  the  note.13 

§  152.  The  right  of  property  which  an  inventor  has  in 
his  invention,  is  excelled,  in  point  of  dignity,  by  no  other 
property  right  whatever.  It  is  equalled,  in  point  of  dig- 
nity, only  by  the  rights  which  authors  have  in  their  copy- 
righted books.  The  inventor  is  not  the  pampered  favorite 
or  beneficiary  of  the  government,  or  of  the  nation.  The 
benefits  which  he  confers,  are  greater  than  those  which  he 
receives.  He  does  not  cringe  at  the  feet  of  power,  nor 
secure  from  authority  an  unbought  privilege.  He  walks 
everywhere  erect,  and  scatters  abroad  the  knowledge 
which  he  created.  He  confers  upon  mankind  a  new  means 
of  lessening  toil,  or  of  increasing  comfort;  and  what  he 
gives  cannot  be  destroyed  by  use,  nor  lost  by  misfortune. 
It  is  henceforth  an  indestructible  heritage  of  posterity. 
On  the  other  hand,  he  receives  from  the  government, 
nothing  which  cost  the  government  or  the  people  a  dollar 

10  McClurg  v.  Kingsland,  1  13  Non-Magnetic  Watch  Co.  v. 
Howard,  202,  1843.  Association,   44  F.   R.   6,    1890; 

11  See  Sections  157  and  391.  Standard  Gas  Power  Co.  v.  Stand- 

12  Green  v.  Biddle,  8  Wheaton,  ard  Gas  Power  Co.,  224  F.  R.  990, 
75,   1823;   Bronson  v.   Kinzie,    1  1915. 

Howard,  317,  1843. 


CHAP.    VII.]  LETTERS   PATENT  IS? 

or  a  sacrifice.  He  receives  nothing  but  a  contract,  which 
provides  that  for  a  limited  time  he  may  exclusively  enjoy 
his  own.  Compared  with  those  who  acquire  property 
by  devise  or  inheritance;  compared  with  those  who  acquire 
by  gift  or  marriage;  compared  with  those  who  acquire 
property  by  profits  on  sales,  or  by  interest  on  money; 
the  man  who  acquires  property  in  inventions,  by  creating 
things  unknown  before,  occupies  a  position  of  superior 
dignity.  Even  the  man  who  creates  value  by  manual 
labor,  though  he  rises  in  dignity  above  the  heir,  the  donee, 
the  merchant,  and  the  money-lender,  falls  in  dignity 
below  the  author  and  the  inventor.  The  inventor  of  the 
reaper  is  entitled  to  greater  honor  than  his  father  who 
used  the  grain  cradle;  and  the  inventor  of  the  grain  cradle 
is  entitled  to  greater  honor  than  his  ancestors,  who,  for  a 
hundred  generations,  had  used  the  sickle.  Side  by  side 
stand  the  inventor  and  the  author.  Their  labor  is  the 
most  dignified  and  the  most  honorable  of  all  labor;  and 
the  resulting  property  is  most  perfectly  theirs. 

Francis  Bacon  gave  the  weight  of  his  opinion,  to  views 
somewhat  similar  to  the  foregoing.  The  following  is  a 
translation  of  one  of  his  Latin  paragraphs: 

"The  introduction  of  great  inventions  appears  one  of  the 
most  distinguished  of  human  actions,  and  the  ancients  so 
considered  it;  for  they  assigned  divine  honors  to  the  au- 
thors of  inventions,  but  only  heroic  honors  to  those  who 
displayed  civil  merit;  such  as  the  founders  of  cities  and 
empires,  legislators,  the  deliverers  of  their  country  from 
lasting  misfortunes,  the  quellers  of  tyrants,  and  the  like. 
And  if  any  one  rightly  compare  them,  he  will  find  the  judg- 
ment of  antiquity  to  be  correct;  for  the  benefits  derived 
from  inventions  may  extend  to  mankind  in  general,  but 
civil  benefits  to  particular  lands  alone;  the  latter,  more- 
over, last  but  for  a  time  the  former  forever.     Civil  refor- 


188  LETTERS    PATENT  [CHAP.    VII. 

mation  seldom  is  carried  on  without  violence  and  con- 
fusion, while  inventions  are  a  blessing  and  a  benefit 
without  injuring  or  afflicting  any."  " 

§  152a.  Section  152  of  this  book  is  the  same  in  all  its 
editions.  During  the  twenty  years  which  have  passed 
since  the  first  edition,  that  section  has  occasionally  been 
quoted  in  the  speeches  of  statesmen  and  advocates,  when 
they  were  eulogizing  the  patent  laws  of  the  United  States. 
Many  years  before  he  wrote  his  Novum  Organum,  Fran- 
cis Bacon,  in  the  preface  to  his  Treatise  on  Interpreting 
Nature,  wrote  a  paragraph  which  may  have  been  influen- 
tial toward  causing  the  parliament  to  establish  the 
patent  laws  of  England,  in  the  celebrated  statute  of 
James  the  First.  The  following  is  a  copy  of  that  para- 
graph: 

"Now  among  all  the  benefits  that  could  be  conferred 
upon  mankind,  I  discovered  none  so  great  as  the  dis- 
covery of  new  arts  for  the  bettering  of  human  life.  For 
I  saw  that  among  the  rude  people  of  early  times,  inventors 
and  discoverers  were  reckoned  as  gods.  It  was  seen  that 
the  works  of  founders  of  States,  lawgivers,  tyrant-de- 
stroyers, and  heroes  cover  but  narrow  spaces,  and  endure 
but  for  a  time;  while  the  work  of  the  inventor,  though  of 
less  pomp,  is  felt  everywhere,  and  lasts  forever." 

Some  Federal  judges  also,  in  recent  years,  have  written 
sentences  similar,  in  spirit,  to  the  paragraphs  of  Francis 
Bacon. 

Thus  Judge  Buffington:  "While  the  motive  and  re- 
ward of  the  inventor  is  monetary,  his  work,  measured  by 
beneficent  results,  may  arise  to  the  dignity  of  the  hu- 
mane." 15  And  thus  Judge  Brawley:  "The  protection 
and  hope  of  profit,  held  out  by  our  patent  laws,  inspires 

14  Novum   Organum,   Book    1,  15  Brislin  v.  Carnegie  Steel  Co., 

Section  CXXIX.  118  F.  R.  589,  1902. 


CHAP.    VII.]  LETTERS    PATENT  18!) 

that  stimulating  energy  which  leads  to  experiment,  in- 
vention, and  all  the  resulting  benefits."  16  And  thus 
Judge  Grosscup:  "Inventive  genius  has  given  to  man- 
kind most  of  its  present  material  civilization.  The  mag- 
nificent flower  of  civilization,  everywhere  surrounding 
us,  has  opened  from  germs  that  were  fructified  from  the 
brains  of  inventors."  17 

§  153.  "  Letters  patent  are  not  to  be  regarded  as  monop- 
olies, created  by  the  executive  authority  at  the  expense 
and  to  the  prejudice  of  all  the  community  except  the  per- 
sons therein  named  as  patentees,  but  as  public  franchises 
granted  to  inventors  of  new  and  useful  improvements, 
for  the  purpose  of  securing  to  them,  as  such  inventors,  for 
the  limited  term  therein  mentioned,  the  exclusive  right 
and  liberty  to  make  and  use,  and  vend  to  others  to  be 
used,  their  own  inventions,  as  tending  to  promote  the 
progress  of  science  and  the  useful  arts,  and  as  matter  of 
compensation  to  the  inventors,  for  their  labor,  toil  and 
expense  in  making  the  inventions,  and  reducing  the  same 
to  practice  for  the  public  benefit,  as  contemplated  by  the 
Constitution  and  sanctioned  by  the  laws  of  Congress." 
Such  is  the  accepted  doctrine  as  formulated  by  Justice 
Clifford  when  speaking  for  the  Supreme  Court.18  The 
same  ideas  were  more  concisely  expressed  in  an  earlier 
case  by  Justice  Daniel.19  Speaking  of  the  inventor's 
exclusive  right,  he  said:  "This  was  at  once  the  equivalent 
given  by  the  public  for  benefits  bestowed  by  the  genius 
and  meditations  and  skill  of  individuals,  and  the  incen- 

16  Crown  Cork  &  Seal  Co.  v.  18  Seymour  v.  Osborne,  11  Wal- 
Aluminum  Stopper  Co.,  108  F.  R.     lace,  533,  1870. 

870,  1901.  See  Section  151. 

17  Westinghouse  Air-Brake  Co.  19  Kendall  v.  Winsor,  21  How- 
v.  Chicago  Brake  &  Mfg.  Co.,  85      ard,  322,  1858. 

F.  R.  794,  1898. 


l!>()  LETTERS    PATENT  [CHAP.    VII. 

tive  to  further  efforts  for  the  same  important  objects." 
Writing  an  opinion  of  the  Supreme  Court,  and  referring 
to  the  doctrine  of  patents,  Justice  Miller  said:  "It  is 
no  longer  a  scarcely  recognized  principle,  struggling  for  a 
foothold,  but  it  is  an  organized  system,  with  well-settled 
rules,  supporting  itself  at  once  by  its  utility,  and  by  the 
wealth  which  it  creates  and  commands."  20  These  opin- 
ions of  the  Supreme  Court  agree,  therefore,  in  holding, 
with  all  fair  and  thoughtful  men,  that  patent  rights  are 
not  hurtful  monopolies,  but  are  rights  of  property  at  once 
dignified,  honorable,  and  strong. 

§  155.  It  was  said  in  previous  editions  of  this  book  that 
no  State  has  any  power  to  make  any  law  "  interfering  with  " 
the  sale  of  any  patent  right,  and  a  number  of  state  court 
decisions  were  cited  which  sustained  the  proposition  as 
thus  stated.21  This  question  has  since  come  before  the 
Supreme  Court  in  two  cases  wherein  was  involved  the 
validity  of  a  statute  of  Kansas  which  provided  that  no 
person  should  sell  any  patent  right  without  first  filing  in 
the  office  of  the  District  Court  of  the  County  duly  au- 
thenticated copies  of  the  letters  patent  and  making  oath 
that  the  letters  are  genuine  and  have  not  been  revoked  or 
annulled,  and  that  the  seller  had  full  authority  to  transfer 
them.  The  Supreme  Court  overruled  the  previous  cases 
above  referred  to  and  also  some  cases  in  the  lower  Federal 
Courts  to  the  same  effect,  and  held  the  Statute  valid  on 
the  ground  that  it  was  a  reasonable  regulation  to  protect 

20  Merrill  v.  Yeomans,  94  U.  S.  1876;  Cranson  v.  Smith,  37  Mich. 
573,  1876.  310,  1877;  Tennessee  v.  Butler,  71 

21  Ex  parte  Robinson,  2  Bissell,  Tenn.  222,  1879;  Wilch  v.  Phelps, 
313,  1870;  Hollida  v.  Hunt,  70  111.  14  Neb.  134,  1883;  Castle  v. 
110,  1873;  Helm  v.  First  National  Hutchinson,  25  F.  R.  394,  1885; 
Bank,  43  Ind.  167,  1873;  Hascall  Commonwealth  v.  Petty,  96  Ky. 
v.  Whitman,  19  Me.  102,  1873;  452, 1895;  Ball  v.  Coker,  168  F.  R. 
Crittenden  v.  White,  23  Minn.  24,  304,  1909. 


CHAP.    VII.]  LETTERS    PATENT  191 

the  citizens  of  the  State  from  fraud.-2    The  court  said  in 
one  of  those  cases,  Allen  v.  Riley: 

"The  act  must  be  a  reasonable  and  fair  exercise  of  the 
]  lower  of  the  State  for  the  purpose  of  checking  a  well- 
known  evil  and  to  prevent,  so  far  as  possible,  fraud  and 
imposition  in  regard  to  the  sales  of  rights  under  patents. 
Possibly  Congress  might  enact  a  statute  which  would 
take  away  from  the  States  any  power  to  legislate  upon  the 
subject,  but  it  has  not  as  yet  done  so.  It  has  simply  pro- 
vided that  every  patent,  or  interest  therein,  shall  be 
assignable  in  writing,  leaving  to  the  various  States  the 
power  to  provide  for  the  safeguarding  of  the  interests  of 
those  dealing  with  the  assumed  owner  of  a  patent,  or  his 
assignee.  To  deal  with  that  subject  has  been  the  purpose 
of  the  acts  passed  by  the  various  States,  among  them  that 
of  the  State  of  Kansas,  and  we  think  that  it  was  within 
the  powers  of  the  State  to  enact  such  statute.  The  ex- 
pense of  filing  copies  of  the  patent  and  the  making  of 
affidavits  in  the  various  counties  of  the  State  in  which 
the  owner  of  the  rights  desired  to  deal  with  them  is  not  so 
great  in  our  judgment  as  to  be  regarded  as  oppressive  or 
unreasonable,  and  we  fail  to  find  any  other  part  of  the 
act  which  may  be  so  regarded.  Some  fair  latitude  must 
be  allowed  the  States  in  the  exercise  of  their  powers  on 
this  subject.  It  will  not  do  to  tie  them  up  so  carefully 
that  they  cannot  move,  unless  the  idea  is  that  the  States 
have  positively  no  power  whatever  on  the  subject.  This 
we  do  not  believe,  at  any  rate  in  the  absence  of  Congres- 
sional legislation.  The  mere  provision  in  the  Federal 
statute  for  an  assignment  and  its  record  as  against  subse- 
quent purchasers,  etc.,  is  not  such  legislation  as  takes 
away  the  rights  of  the  States  to  legislate  on  the  subject 

»  Allen  v.  Riley,  203  U.  S.  347,      Carl,  203  U.  S.  358,  1900;  Ozan 
190G;  also,  John  Woods  &  Sons  v.      Co.  v.  Union,  207  U.  S.  251,  1907. 


L92  LETTERS    PATENT  [CHAP.    VII. 

themselves  in  a  manner  neither  inconsistent  with  nor  op- 
posed to  the  Federal  statute.  We  think  the  judgment  is 
right,  and  it  is  affirmed." 

Every  State  has  power  to  regulate  the  making,  the  sell- 
ing and  the  using  of  the  tilings  covered  by  any  patent,  to 
the  same  extent  that  it  lawfully  regulates  the  making, 
selling,  and  using  of  unpatented  things.  Things  covered 
by  patents  are  as  much  subject  to  the  law  of  common 
carriers,  the  revenue  laws,  and  the  police  powers,  of  a 
State  or  municipality,  as  any  other  things.  Where  a 
patented  invention  is  used  by  the  owner  of  the  patent 
which  covers  it,  or  by  a  licensee  under  that  patent,  in  a 
public  business,  like  the  telephone  business,  for  example; 
that  user  may  be  compelled,  by  writ  of  mandamus,  to 
impartially  serve  all  those  who  properly  request  such  serv- 
ice to  be  furnished  to  them.23  Nor  does  a  patent  on  a 
sewing-machine,  for  example,  exempt  the  patentee  from 
any  State  tax  on  the  machines  he  may  make,  use  or  sell 
within  the  boundaries  of  that  State.24  And  a  patent  for  a 
dynamite  powder,  or  for  a  deadly  poison,  or  for  an  ex- 
plosive oil,  does  not  oust  nor  affect  the  power  of  local 
authorities  to  prescribe  the  place  and  manner  of  the  manu- 
facture, storage  and  sale  of  those  dangerous  substances.24" 
Neither  does  a  patent  on  a  medicine,  authorize  the  pat- 
entee to  prescribe  or  administer  that  medicine,  without 
conforming  to  the  medical  practice  laws  of  the  State, 

23  Ohio  v.  Bell  Telephone  Co.,  Telegraph  Co.  v.  Telephone  Co., 
36  Ohio  State  Reports,  296,  1880;  91  Vt.  243,  1888;  Delaware  Tele- 
Missouri  v.  Bell  Telephone  Co.,  24  phone  Co.  v.  Delaware,  50  F.  R. 
American    Law    Register,    573,  677,  1892. 

1885;  Nebraska  v.  Nebraska  Tele-         24  Weber  v.  Virginia,  103  U.  S. 

phone    Co.,    24    American    Law  347,  1880. 

Register,   262,    1885;   Bell  Tele-         24«  Patterson  ».   Kentucky,  97 

phone    Co.    v.    Pennsylvania,    7  U.  S.  505,  1878. 
Eastern    Reporter,     672,     1886; 


CHAP.    VII.]  LETTERS    PATENT  193 

in  which  he  undertakes  thus  to  practice  his  invention.25 
Nor  does  a  patent  on  a  process  or  a  machine,  which  may  be 
used  in  some  kind  of  gambling,  protect  the  patentee  against 
prosecution  under  State  laws,  for  thus  using  his  inven- 
tion.26 

The  reason  why  a  State  has  complete  power  of  regula- 
tion over  the  sale  of  a  patented  thing,  and  is  restricted 
in  its  power  of  regulation  over  the  sale  of  the  patent  cov- 
ering that  thing,  is  explainable  as  follows.  A  patentee  has 
two  kinds  of  rights  in  his  invention.  He  has  a  right  to 
make,  use,  and  sell  specimens  of  the  invented  thing;  and 
he  has  a  right  to  prevent  all  other  persons  from  doing 
either  of  those  acts.  The  first  of  these  rights  is  wholly 
independent  of  the  patent  laws;  while  the  second  exists 
by  virtue  of  those  laws  alone.27  A  patentee  therefore 
holds  the  first  of  these  rights  subject  not  only  to  the  police 
powers,  but  to  the  taxing  powers,  of  the  State,  and  to 
the  law  regulating  common  carriers;  while  the  second, 
being  the  creature  of  the  laws  of  Congress,  is  wholly 
beyond  State  control  or  interference,  by  anti-trust  laws,28 
or  otherwise  except  in  the  exercise  of  the  police  powers  of 
the  State. 

§  156.  Patent  rights,  being,  as  they  are,  intangible 
property,  cannot  be  seized  and  sold  under  the  authority 
of  any  writ  of  fieri  facias,  or  other  common-law  execution.29 
They  may,  however,  be  reached  by  a  creditor's  bill  in 

25  Jordan  v.  Dayton,  4  Ohio,  238,  1897;  Jewett  v.  Atwood  Sus- 

295,  1831.  pender  Co.,  100  F.  R.  647,  1900; 

28  Vannini    v.    Paine,    1    Har.  Victor  Talking  Mach.  Co.  v.  The 
(Del.)      65;      Heaton-Peninsular  Fair,  123  F.  R.  426,  1903. 
Button-Fastener   Co.   v.   Eureka  28  Columbia  Wire  Co.  v.  Free- 
Specialty  Co.,  77  F.  R.  294,  1896.  man  Wire  Co.,  71  F.  R.  306,  1895. 

27  Bloomer   v.    McQuewan,    14  29  Stevens  v.  Cady,  14  Howard, 

Howard,  539,  1852;  United  States  528, 1852;  Stevens  v.  Gladding,  17 

v.  Bell  Telephone  Co.,  167  U.  S.  Howard,  447,  1854. 


194  LETTERS   PATENT  [CHAP.    \  II. 

equity,30  and  thus  be  applied  to  the  payment  of  the  debts 
of  the  owners;  the  same  as  trust  property,  choscs  in  action, 
or  stock  of  a  debtor  in  a  corporation,  may  be  reached 
and  applied.  A  court  of  equity  may,  in  pursuance  of  its 
powers  in  such  cases,  decree  that  the  debtor  patentee  pay 
the  judgment  upon  which  the  bill  is  based,  or,  in  default 
I  hereof,  that  his  patent  right  be  sold  under  the  direction 
of  the  court,  and  an  assignment  thereof  be  executed  by 
him,  and,  in  default  of  his  executing  such  an  assignment, 
that  some  suitable  person  be  appointed  trustee  to  execute 
the  same  in  his  place,31  or  that  the  master  in  chancery 
of  the  court  shall  perform  that  function.32 

§  157.  Previous  editions  of  this  book  stated  that  patent 
rights  are  exclusive,  not  only  of  citizens  and  residents  of 
the  United  States,  but  also  of  the  government  itself,  and 
of  its  agents;  that  the  government  has  no  more  right  than 
any  private  citizen,  to  make,  use,  or  sell  a  patented  in- 
vention, without  the  license  of  the  patentee; 33  and  that 
when  the  government  grants  letters  patent  for  an  inven- 
tion, it  confers  upon  the  patentee  an  exclusive  property 
therein,  which  cannot  be  appropriated  or  used  by  the 
government  itself,  without  just  compensation,  any  more 
than  land  which  has  been  patented  to  a  private  pur- 
chaser can,  without  compensation,  be  appropriated  or 
used    by    the    government.34     These    statements    were 

3°  Newton  v.  Buck,  72  F.  R.  780,  Wallace,  252,  1870;  Cammeyer  v. 

1896.  Newton,  94  U.  S.  234,  1876;  Solo- 

31  Ager  v.  Murray,  105  U.  S.  mons  v.  United  States,  137  U.  S. 
126,  1881;  Underfeed  Stoker  Co.  346,  1890;  Belknap  v.  Schild,  161 
v.  American  Ship  Windlass  Co.,  U.  S.  16,  1896;  see  sections  392 
165  F.  R.  65,  1908;  Ball  v.  Coker,  and  393. 

168  F.  R.  304, 1909.  See  Harley  v.  U.  S.,  198  U.  S. 

32  Wilson  v.  Fire  Alarm  Co.,  52      234,  1905. 

O.  G.  901,  1890.  34  James  v.  Campbell,  104  U.  S. 

33  United  States  v.  Burns,   12      356,     1881;     United     States     v. 


(  HAP.    VII.]  LETTERS   PATENT  195 

correct  when  made  and  are  correct  now,  but  in  1910  Con- 
gress passed  an  act  providing  for  compensation  for  the 
appropriation  of  patent  rights,  as  follows: 

"That  whenever  an  invention  described  in  and  covered 
by  a  patent  of  the  United  States  shall  hereafter  be  used 
by  the  United  States  without  license  of  the  owner  thereof 
or  lawful  right  to  use  the  same,  such  owner  may  recover 
a  reasonable  compensation  for  such  use  by  suit  in  the 
Court  of  Claims:  Provided,  however,  That  said  Court  of 
Claims  shall  not  entertain  a  suit  or  reward  compensation 
under  the  provisions  of  this  Act  where  the  claim  for 
compensation  is  based  on  the  use  by  the  United  States 
of  any  article  heretofore  owned,  leased,  used  by,  or  in 
the  possession  of  the  United  States:  Provided  further, 
That  in  any  such  suit  the  United  States  may  avail  itself 
of  any  and  all  defenses,  general  or  special,  which  might 
be  pleaded  by  a  defendant  in  an  action  for  infringement, 
as  set  forth  in  Title  Sixty  of  the  Revised  Statutes,  or 
otherwise:  And  provided  further,  That  the  benefits  of  this 
Act  shall  not  inure  to  any  patentee,  who,  when  he  makes 
such  claim  is  in  the  employment  or  service  of  the  Govern- 
ment of  the  United  States;  or  the  assignee  of  any  such 
patentee ;  nor  shall  this  Act  apply  to  any  device  discovered 
or  invented  by  such  employee  during  the  time  of  his  em- 
ployment or  service."  35 

This  Statute  is  held  by  the  Supreme  Court  in  Crozier 
v.  Krupp  36  to  be  an  authorization  to  appropriate  under  the 
law  of  eminent  domain  a  license  to  use  the  invention  of  any 
United  States  patent.  The  court  recognizes  the  doctrine 
held  before  the  passage  of  the  Act  that  an  inventor  was 
entitled  to  sue  in  the  Court  of  Claims  to  recover  a  license 

Palmer,  128  U.  S.  271,  1888;  In-  35  36  Statutes,  851,  Chap.  423, 

ternational  Postal  Supply  Co.  v.      Laws  1910. 

Bruce,  114  F.  R.  511,  1902.  3S  Crozier  v.  Krupp,  224  U.  S. 

290, 1912;  see  sections  392  and  393. 


1 '.)(')  LETTERS    PATENT  [CHAP.    VII. 

fee  for  the  use  of  his  patent  when  the  use  was  by  virtue 
of  a  contract  between  the  inventor  and  the  government,37 
and  holds  that  the  act  extends  this  right  to  an  inventor 
whose  invention  has  been  used  by  the  government,  with- 
out his  consent, — in  other  words,  when  the  government 
has  committed  a  tort  in  so  doing.  As  to  the  right  to  an 
injunction  against  an  officer  of  the  government  to  enjoin 
him  from  using  the  invention  for  the  benefit  of  the  gov- 
ernment the  court  said: 

".  .  .  in  view  of  the  subject-matter  of  the  contro- 
versy and  the  right  of  the  United  States  to  exert  the  power 
of  eminent  domain  as  to  that  subject,  at  most  and  in  any 
event  the  injunction  could  rightfully  only  have  been  made 
to  operate  until  the  United  States  had  appropriated  the 
right  to  use  the  patented  inventions,  and  as  that  event  has 
happened  the  injunction,  if  granted,  would  no  longer 
have  operative  force.  It  follows  that  the  decree  of  the 
Court  of  Appeals  must  be  reversed  with  directions  to  that 
court  to  affirm  the  decree  of  the  Supreme  Court  of  the 
District  of  Columbia  dismissing  the  bill,  without  prejudice 
however  to  the  right  of  the  defendant  here,  who  was  the 
complainant  below,  to  proceed  in  the  Court  of  Claims  in 
accordance  with  the  provisions  of  the  act  of  1910." 

It  may  accordingly  be  considered  to  be  the  law  that  an 
officer  of  the  Government  cannot  be  sued  in  such  a  case 
as  the  above.  The  doctrine  has  however,  been  carried 
still  further  in  the  case  of  Marconi  Wireless  Telegraph  Co. 
v.  Simon, 37a  where  it  was  held  that  one  who  contracts  to 
supply  to  the  government  articles  that,  if  supplied  to  a 
private  party,  would  be  an  infringement,  is  immune  from 

37  Crozier  v.  Krupp,  224  U.  S.  37a  Marconi  Wireless  Telegraph 

290,  1912;  United  States  v.  An-  Co.  v.  Simon,  227  F.  R.  906,  1915 

ciens  Etablissements,  224  U.  S.  (affirmed  231  F.  R.  1021). 
309,  1912. 


CHAP.    VII.]  LETTERS   PATENT  l!)7 

injunction.  It  was  said  in  the  opinion  that  the  con- 
tractor in  such  case  was  supplying  goods  to  a  lawful  li- 
censee. This  holding  should  not,  however,  necessarily 
preclude  a  recovery  from  the  contractor  of  damages  and 
profits,  although  it  has  been  held  that  it  does  so; 38  and 
on  the  assumption  that  the  contractor  was  not  an  in- 
fringer because  the  government  was  not  one  and  that,  as 
said  in  the  cases  cited  in  the  last  reference,  the  contractor 
is  supplying  goods  to  a  lawful  licensee,  the  holding  would 
seem  to  be  correct.  On  the  contrary,  however,  it  does  not 
appeal  to  our  sense  of  justice  that  a  third  party  without 
the  consent  of  the  patentee,  should  be  permitted  to  retain 
to  himself  profits  which  he  has  acquired  by  carrying  out 
his  contract  with  the  government  when  he  would  not  be 
permitted  to  retain  them  had  he  been  carrying  out  the 
contract  with  a  private  party  or  had  been  using  the  pat- 
ent for  his  own  benefit.  It  is  obvious,  however,  that  if 
the  outcome  of  a  contract  with  the  government  to  supply 
the  latter  with  patented  articles  was  likely  to  be  a  suit 
by  the  patentee  for  the  recovery  of  damages  and  profits,, 
the  operation  of  the  statute  would  be  considerably  ham- 
pered. 

§  158.  As  provided  by  the  Revised  Statutes  no  patent 
right  covers  any  use  or  sale  of  any  specimen  of  the  patented 
thing  which  was  purchased  of  the  inventor,  or  made  by 
another  with  his  knowledge  and  consent,  before  his  ap- 
plication for  a  patent  therefor.39 

An  application  of   the  rule  of  the   Statute  is  made 

38  Marconi  Wireless  Telegraph  William  Cramp  &  Sons  etc.,  Co., 

Co.  v.  Simon  (D.  C),  227  F.  R.  232  F.  R.  166,  1916. 

906,    1915   (affirmed   231   F.   R.  39  Revised     Statutes,     Section 

1021);  also  International  Curtis,  4899;    Wade    v.    Metcalf,     129 

etc.,  Co.  ^.-William  Cramp  &  Sons  U.   S.  202,    1889;  Dable    Grain 

etc.,  Co.,  202  F.  R.  932,   1912;  Shovel  Co.   v.   Flint,   137    U.   S. 

International  Curtis,  etc.,  Co.  v.  41,  1890. 


L98  LETTERS    PATENT  [CHAP.    VII. 

where,  while  an  application  is  pending  the  applicant 
submits  to  the  Federal  Government  plans  of  his  tie- 
vice  with  the  purpose  of  procuring  the  Government 
to  advertise  for  open  bids.  In  such  case,  the  contract 
of  the  successful  bidder  being  legal  when  made,  and 
made  with  the  consent  of  the  patentee,  no  injunction 
will  issue  even  after  the  issuance  of  the  patent.40  Nor  will 
any  action  for  damages  lie  on  behalf  of  a  patentee 
against  one  who  has  wilfully  by  obstructive  tactics  as  by 
filing  an  interference  caused  issuance  of  the  patent  to  be 
delayed."  Where  another  than  the  inventor,  surrepti- 
tiously obtains  knowledge  of  an  invention,  and,  without 
the  consent  of  the  inventor,  makes  a  specimen  of  the 
invented  thing  before  any  patent  thereon  is  applied  for, 
that  specimen  is  covered  by  a  patent  for  that  inven- 
tion, as  truly  and  as  fully  as  it  would  be  if  it  had  been 
made  by  an  infringer  after  the  date  of  that  patent. 

The  word  "  person"  in  the  statute  referring  to  those  who 
obtain  rights  to  the  subsequently  patented  article  is  to 
be  interpreted  literally  and  is  not  confined  merely  to  those 
in  privity  with  the  inventor  by  virtue  of  a  purchase  or 
series  of  purchases,  as  for  instance  when  the  patented 
article  has  become  affixed  to  realty  by  the  operation  of  a 
state  law.41™ 

Where  another  than  the  first  inventor,  re-invents  and 
constructs  a  specimen  of  an  invention,  before  any  patent 
is  applied  for  thereon,  and  does  so  without  any  knowledge 
of  the  inventor,  or  of  his  doings,  and  without  the  knowl- 
edge or  consent  of  the  inventor  himself,  he  cannot  invoke 

40  Sub-Target  Gun  Co.  v.  Holli-  Case  Plow  Works,  174  F.  R.  147, 
field  Target   Practice   Rod   Co.,      1909. 

175  F.  R.  119,  1910.  41a  Federal  Construction  Co.  v. 

41  B.  F.  Avery  &  Sons  v.  J.  I.      Park  Improvement  Co.,  166  F.  R. 

128,  1908. 


CHAP.    VII.]  LETTERS    PATENT  L99 

the  rule  stated  at  the  beginning  of  this  section;  because 
knowledge  and  consent  of  the  inventor  is  an  express  ele- 
ment in  the  statute  which  supports  that  rule.  But  it  is 
probable  that  the  specific  thing,  so  constructed,  is  taken 
out  of  the  operation  of  a  patent  afterward  applied  for, 
by  the  direct  action  of  the  fifth  amendment  to  the  Con- 
stitution of  the  United  States.  That  amendment  provides 
that  no  person  shall  be  deprived  of  property  without  due 
process  of  law.  Things  independently  re-invented  and 
innocently  made,  before  the  first  inventor  applied  for  a 
patent  thereon,  are  the  lawful  property  of  him  who  thus 
made  them.  To  deprive  him  of  the  right  to  use  and  to  sell 
those  things,  would  be  to  lessen  or  to  destroy  their  value, 
and  thus  to  deprive  him  of  property  rights.  If  such  an 
act  is  ever  done  at  the  suit  of  the  first  inventor,  after  he 
gets  his  patent,  it  will  be  done  by  virtue  of  that  patent. 
Now,  a  patent  is  the  creature  of  a  statute.  No  statute  is 
''due  process  of  law,"  42  and  no  patent  can  be  "due  proc- 
ess of  law"  unless  a  creature  can  be  greater  than  its 
creator:  unless  a  statute  can  authorize  a  contract  to  ac- 
complish, upon  the  rights  of  third  parties,  a  result  which 
the  statute  itself  is  forbidden  to  accomplish.  If  this  reason- 
ing and  this  conclusion  are  correct,  it  will  not  follow  there- 
from, that  such  a  re-inventor  may  construct  any  specimen 
of  the  invention  after  the  first  inventor  has  obtained  a 
patent  thereon.  To  deprive  a  re-inventor  of  such  a  priv- 
ilege, is  not  to  deprive  him  of  property,  for  no  re-inventor 
has  any  property  right  in  an  invention  which  he  was  the 
second  in  the  United  States  to  make,  any  more  than  he 
would  have  if  he  had  learned  of  that  invention  from  a  news- 
paper or  from  a  book. 

§  159.  The  rule  stated  at  the  head  of  the  last  section 

42  Barron  v.  Baltimore,  7  Peters,  247,  1833;  Taylor  v.  Porter,  4  Hill 
(N.  Y.),  147,  1843. 


200  LETTERS    PATENT  [CHAP.    VII. 

does  not  apply  to  any  process  patent.  Section  4899  of 
the  Revised  Statutes,  treats  only  of  machines  or  other 
patentable  articles,  and  confers  exemption  from  the 
operation  of  patents  upon  nothing  but  specific  things. 
Now,  a  process  is  neither  an  article  nor  a  thing.  It  is  a 
series  of  acts.  It  is  therefore  outside  the  language  of  the 
law  on  this  subject.  It  is  also  outside  the  reason  of  that 
law.  That  reason  is  as  follows:  Where  another  than  the 
first  inventor  of  a  particular  tangible  thing,  buys  from  the 
inventor  a  specimen  of  that  thing,  or  makes  such  a  speci- 
men with  his  consent,  or  re-invents  and  makes  such  a 
specimen  independently  of  the  first  inventor,  that  speci- 
men ought  to  be  exempt  from  any  patent  afterward  ap- 
plied for  by  the  first  inventor;  because,  if  it  is  not  so 
exempt,  it  will  become  worthless  in  the  hands  of  one  who 
honestly  expended  of  his  substance  to  procure  it,  and  who 
procured  it  without  violating  any  patent  or  any  law.  Proc- 
esses are  not  subjects  of  these  considerations.  A  process 
cannot  be  purchased.  The  right  to  practice  a  patented 
process  can  indeed  be  purchased ;  but  the  right  to  practice 
an  unpatented  process,  while  it  remains  unpatented,  can- 
not be  the  subject  of  a  sale,  because  that  right  belongs  to 
every  one  without  any  purchase.  So  also,  if  an  inventor  of 
a  process  consents  that  another  person  may  practice  that 
process,  before  the  inventor  applies  for  a  patent,  that  fact 
furnishes  no  reason  why  that  person  should  be  allowed  to 
practice  that  process,  against  the  will  of  that  inventor, 
after  the  date  of  his  patent.  To  deprive  such  a  person  of 
such  a  privilege,  is  not  to  deprive  him  of  the  use  of  a 
thing.  It  is  only  to  deprive  him  of  the  privilege  of  repeat- 
ing a  series  of  acts.  These  considerations  apply  also  to 
cases  where  a  re-inventor  produces  and  practices  a  process, 
after  its  production  by  the  first  inventor,  and  before  any 
application  is  made  for  a  patent  thereon,  and  without  any 


CHAP.    VII.]  LETTERS   PATENT  201 

knowledge  of  the  first  inventor  or  his  doings.  Such  a 
re-inventor  has  no  more  natural  right  to  practice  thai 
process,  after  a  patent  is  granted  to  the  first  inventor, 
than  any  other  person  has.  He  has  no  such  right  growing 
out  of  the  fact  that  he  was  a  re-inventor,  because  the  pat- 
ent laws  do  not  reward  re-inventors,  and  because  patents 
to  first  inventors  are  exclusive  of  re-inventors,  as  well  as 
of  other  persons.  He  has  no  such  right  growing  out  of 
rights  of  property,  because  to  deprive  him  of  the  privilege 
of  repeating  the  process  is  not  to  deprive  him  of  the  use 
of  any  tangible  property,  and  because  he  has  no  tangible 
property  in  the  process  itself. 

§  160.  Every  United  States  patent  is  in  general  co- 
extensive, in  point  of  the  territory  it  covers,  with  the 
territory  covered  by  the  jurisdiction  of  the  United  States.43 
Every  such  patent,  therefore,  covers  the  use  of  the  pat- 
tented  thing  in  or  under  the  tide-waters  of  the  United 
States;  and  that,  too,  even  in  cases  where  the  government 
has  granted,  to  others  than  the  patentee,  the  exclusive 
right  to  do,  at  a  particular  place,  the  particular  thing 
which  the  patented  invention  is  adapted  to  accomplish.44 
In  the  case  just  cited,  the  complainant  had  a  patent  on  a 
certain  submarine  telegraph  cable;  and  the  defendant 
had  a  grant  from  Congress,  giving  it  the  sole  right,  for 
fourteen  years,  to  lay,  construct,  land,  maintain,  and 
operate  telegraphic  cables  in  and  over  the  waters,  reefs, 
islands,  shores,  and  lands  over  which  the  United  States 
have  jurisdiction,  from  the  shores  of  Florida  to  the  Is- 
land of  Cuba.  Under  these  circumstances,  Justice 
Blatchford  decided  that  the  defendant  acquired,  by  its 
grant,  no  right  to  use  the  patented  cables  of  the  complain- 
ant; and  he  intimated  that  the  complainant  acquired  by 

43  Revised     Statutes,     Section  44  Colgate  v.  Ocean  Telegraph 

4884.    See  Section  706a.  Co.,  17  Blatch.  310,  1879. 


202  LETTERS    PATENT  [CHAP.    VII. 

this  patent,  no  right  to  use  his  cables  between  Florida 
and  Cuba.  His  Honor  supported  this  intimation  by  saying 
that  no  patent  confers  upon  its  owner  any  right  to  make 
or  use  his  invention  in  the  house  of  another;  and  he  sup- 
ported his  decision  by  saying  that  the  fact  just  mentioned 
does  not  confer  upon  another  than  the  patentee  any  right 
to  make  or  use  the  invention  of  the  latter  in  the  house  of 
the  former. 

§  161.  No  United  States  patent  right  extends  to  the 
mere  use  of  the  patented  invention  on  any  foreign  ship 
while  temporarily  in  a  harbor  of  the  United  States  for 
the  purposes  of  commerce;  though  such  a  right  would 
be  infringed  by  making  or  selling  the  patented  article  on 
board  any  foreign  vessel  while  in  either  of  our  ports.45 
United  States  patent  rights  extend  to  the  decks  of  United 
States  ships,  even  when  those  ships  are  on  the  high  seas,  as 
fully  as  they  extend  to  the  solid  earth  of  the  United  States.46 

§  162.  The  regular  duration  of  a  United  States  patent 
for  a  process,  machine,  manufacture,  or  composition  of 
matter,  is  seventeen  years  from  the  date  of  issue.  Sec- 
tion 4884  of  the  Revised  Statutes  provides  that  every 
patent  shall  grant  to  the  patentee,  his  heirs  or  assigns,  for 
the  term  of  seventeen  years,  the  exclusive  right  to  make, 
use,  and  vend  the  invention  covered  thereby.  The  phrase 
" every  patent"  is  not  to  be  understood  in  its  literal  sig- 
nification. It  means  every  patent,  the  duration  of  which 
is  not  otherwise  prescribed  by  statute.  In  the  latter 
category,  design  patents  fall.  Such  patents  are  grantable 
for  fourteen  years,  or  for  seven  years,  or  for  three  years  and 
six  months,  as  the  applicant  may  in  his  application  elect.47 

45  Brown  v.  Duchesne,  19  How-  47  Revised  Statutes,  Section 
ard,  196,  1856.  4931. 

46  Gardner  v.  Howe,  2  Cliff.  464, 
1865. 


CHAP.    VII.]  LETTERS   PATENT  203 

In  the  same  category,  also,  fall  some  patents,  which  were 
granted  for  inventions  for  which  their  owners  had  previ- 
ously obtained  one  or  more  foreign  patents. 

§  163.  "Every  patent  granted  for  an  invention  which 
has  previously  been  patented  in  a  foreign  country,  shall 
be  so  limited  as  to  expire  at  the  same  time  with  the  for- 
eign patent,  or,  if  there  be  more  than  one,  at  the  same 
time  with  the  one  having  the  shortest  term,  and  in  no 
case  shall  it  be  in  force  more  than  seventeen  years."  48 

This  law  applies  to  certain  patents  which  were  granted 
after  July  8,  1870,  on  applications  which  were  filed  before 
January  1,  1898;  but  it  does  not  apply  to  any  patent 
granted  on  an  application  filed  on  or  after  that  date  for 
the  reason  that  in  the  amendment  of  Section  4887  of  the 
Revised  Statutes  by  the  Act  of  March  3,  1897,  in  effect 
January  1, 1898, 49  the  provision  above  quoted  was  omitted. 
On  September  14, 1902,  however,  the  Treaty  of  Brussels  of 
December  14,  1900,  went  into  effect,  whereby  it  was  pro- 
vided as  follows: 

"Art.  4  bis.  Patents  applied  for  in  the  different  con- 
tracting States  by  persons  admitted  to  the  benefit  of  the 
convention  under  the  terms  of  articles  2  and  3  shall  be 
independent  of  the  patents  obtained  for  the  same  inven- 
tion in  the  other  States  adherents  or  non-adherents  to  the 
Union. 

"This  provision  shall  apply  to  patents  existing  at  the 
time  of  its  going  into  effect. 

"The  same  rule  applies,  in  the  case  of  adhesion  of  new 
States,  to  patents  already  existing  on  both  sides  at  the 
time  of  the  adhesion." 

The  question  came  up  in  a  number  of  cases  the  decisions 

«  16  Statutes  at  Large,  Ch.  230,  49  29  Statutes  at  Large,  p.  694, 

Section  25,  p.  201;  Revised  Stat-      Ch.  391,  Sections  3  and  8. 
utes,  Section  4887. 


204  LETTERS    PATENT  [CHAP.    VII. 

of  which  are  cited  in  the  note  M  as  to  whether  or  not  the 
quoted  provision  of  the  Treaty  superseded  Section  4887 
regarding  the  term  of  domestic  patents.  In  Cameron 
Septic  Tank  Co.  v.  Knoxville  r>1  it  was  finally  decided  that 
they  did  not,  as  Article  4  bis  of  the  Treaty  above  emoted 
was  not  self-executing  and  it  was  not  made  effective 
by  the  Act  of  March  3,  1903." 

And  this  law  applies  only  to  cases  wherein  the  foreign 
patent  was  taken  out  by  the  United  States  patentee;  or 
with  his  knowledge  and  consent  by  some  other  person; B8 
or  by  some  person  in  privity  with  him.54 

This  law  applies  to  a  case  where  a  foreign  patent  was 
granted  before  the  granting  of  the  corresponding  United 
States  patent,  even  if  the  foreign  patent  was  made  a 
secret  one  at  the  request  of  the  applicant  therefor; 55  but 
it  does  not  apply  to  a  case  where  a  foreign  patent  was 
dated  before  the  granting  of  the  corresponding  United 
States  patent,  but  not  sealed  or  published  until  after- 
ward; 56  though  it  does  apply  to  a  case  where  the  United 

6°  United  Shoe  Machinery  Co.  Knoxville,  227  U.  S.    39,   1913. 

v.     Duplessis     Shoe     Machinery  5232    Statutes,     1225,    Chap. 

Co.,  148  F.  R.  31,  1906;  United  1019. 

Shoe  Machinery  Co.  v.  Duplessis  53  Hobbs  v.  Beach,  180  U.  S. 

Shoe  Machinery  Co.,  155  F.  R.  397,  1901;  John  R.  Williams  Co. 

842,  1907;  Hennebique  Construe-  v.  Miller,  Du  Brul  &  Peters  Mfg. 

tion  Co.  v.  Myers,  172  F.  R.  869,  Co.,  108  F.  R.  968,  1901. 

1909;  Malignani  v.  Jasper  Marsh  bi  John  R.  Williams  Co.  v.  Mil- 

Consol.  etc.,  Co.,  180  F.  R.  442,  ler,  Du  Brul  &  Peters  Mfg.  Co., 

1910;  Commercial  Acetylene  Co.  115  F.  R.  526,  1902. 

v.  Searchlight  Gas  Co.,  197  F.  R.  55  Gramme    Electrical    Co.    v. 

908,  1912;  Commercial  Acetylene  Electric  Co.,  17  F.  R.  838,  1883. 

Co.  v.  Schroeder,  203  F.  R.  276,  58  Gold  &  Stock  Telegraph  Co. 

1913;  Merrell-Soule  Co.  v.  Pow-  v.  Telegram  Co.,  23  F.  R.  340, 

dered  Milk  Co.,  215  F.  R.  922,  1885;   Emmerson  v.  Lippert,  31 

1914.  F.  R.  911,  1887;  Seibert  Oil  Co.  v. 

"Cameron  Septic  Tank  Co.  v.  Powell  Co.,  35  F.  R.  591,  1888; 


CHAP.    VII.]  LETTERS   PATENT  L'O.") 

States  patent  was  granted  after  the  foreign  patent  was 
sealed,  upon  an  application  filed  before  that  event.57 

And  this  law  does  not  apply  to  a  case  where  the  inven- 
tion, claimed  in  the  United  States  patent,  was  not  claimed, 
but  only  described,  in  the  prior  foreign  patent;58  and  it 
does  not  apply  to  a  case  where  the  foreign  patent  never 
became  operative,  on  account  of  non-compliance  with 
some  condition  of  the  law  under  which  it  was  issued;59 
though  it  does  apply  to  a  case  where  the  foreign  patent 
granted  an  exclusive  right  to  make,  but  granted  no  ex- 
clusive right  to  use  or  sell,  the  invention  covered  by  the 
United  States  patent.60 

And  finally,  this  law  applies  to  such  claims  of  a  United 
States  patent  as  correspond  with  any  invention  described 
in  the  prior  foreign  patent,  even  where  some  of  its  claims 
do  not  thus  correspond.61 

In  a  case  to  which  this  law  applies,  the  United  States 
patent  will  not  expire  with  the  first  term  of  the  foreign 
patent,  if  the  foreign  patent  was,  or  hereafter  shall  be, 
extended  before  the  expiration  of  its  first  term,  in  pur- 
suance of  a  statute  which  was  in  force  when  the  United 
States  patent  was  applied  for  and  when  it  was  issued, 

Holmes  Alarm  Tel.  Co.  v.  Tele-  838,  1883;  Edison  Electric  Light 

phone  Co.,  42  F.  R.  228,  1890;  Co.    v.    United    States    Electric 

American  Bell  Telephone  Co.  v.  Lighting  Co.,  35  F.  R.  135,  1888. 

Cushman,  57  F.   R.   843,   1893;  58  Westinghouse  Electric  &  Mfg. 

Edison    Electric    Light    Co.    v.  Co.  v.  Stanley  Instrument  Co., 

Waring  Electric  Co.,  59  F.  R.  364,  138  F.  R.  823,  1905. 

1894;    Waring    Electric    Co.    v.  59  Societe    Anonyme,    etc.,    v. 

Edison   Electric    Light    Co.,    69  General  Electric  Co.,  97  F.  R.  605, 

F.  R.  645,  1894.  1899. 

"Bate    Refrigerating    Co.    v.  60 Atlas  Glass  Co.  v.  Simonds 

Sulzberger,    157  U.   S.    1,    1895;  Mfg.  Co.,  102  F.  R.  643,  1900. 

Bate  Refrigerating  Co.  v.  Gillett,  61  Western  Electric  Co.  v.  Citi- 

13F.R.  553,  1882;  Gramme  Elec-  zens'  Telephone  Co.,  106  F.  R 

trical  Co.  v.  Electric  Co.,  17  F.  R.  218,  1901. 


206  LETTERS   PATENT  [CHAP.    VII. 

and  which  conferred  an  absolute  right  to  such  an  exten- 
sion, and  if  the  extension  or  extensions  of  the  foreign 
patent  cover  a  continuous  space  of  time.62  And  it  lias 
been  decided  in  several  Circuit  Courts,  that  the  United 
States  patent  will  not  expire  with  the  first  term  of  the 
foreign  patent,  if  the  foreign  patent  might  have  been 
extended  before  the  expiration  of  its  first  term,  in  pur- 
suance of  a  statute  which  was  in  force  when  the  United 
States  patent  was  applied  for  and  when  it  was  issued,  and 
which  conferred  an  absolute  right  to  such  an  extension, 
whether  the  foreign  patent  was  actually  extended  or  not.63 
But  the  contrary  of  this  proposition  has  been  held  by  an- 
other Circuit  Court.64  It  has  also  been  decided  on  the 
Circuit,  that  where  the  patentee  has  no  absolute  right  to 
an  extension  of  the  first  term  of  his  foreign  patent,  no 
such  extension  has  any  effect  upon  the  duration  of  his 
United  States  patent.65 

The  termination  of  a  foreign  patent,  prior  to  its  ap- 
pointed end,  because  of  an  omission  of  the  patentee  to 
do  what  the  foreign  laws  require  in  order  to  keep  it  in 
force,  has  no  effect  upon  the  duration  of  a  corresponding 
United  States  patent.66  Nor  will  any  such  effect  result 
from  the  expiration  of  a  prior  foreign  patent,  on  account 
of  the  expiration  of  a  patent  of  another  foreign  country 
on  the  same  invention.67    Where  the  corresponding  foreign 

62  Bate    Refrigerating    Co.    v.  66  Pohl  v.  Anchor  Brewing  Co., 

Hammond,  129  U.  S.  151,  1889.  134  U.  S.  381,  1890;  Holmes  Pro- 

83  Consolidated  Roller-Mill  Co.  tective  Co.  v.  Alarm  Co.,  21  F.  R. 

v.  Walker,  43  F.  R.  581,  1890;  458,  1884;  Paillard  v.  Bruno,  29 

Pohl  v.  Heyman,  58  F.  R.  568,  F.  R.  864,  1886;  Victor  Talking 

1893.  Mach.  Co.  v.  Hoschke,  158  F.  R. 

fl4  Bonsack  Mach.  Co.  v.  Smith,  309,    1907    (Canadian    Patent); 

70  F.  R.  395,  1895.  Leeds  &  Catlin  v.  Victor  Talking 

65  Henry  v.  Tool  Co.,  3  Bann.  &  Mach.  Co.,  213  U.  S.  301,  1909. 

Ard.  501,  1878.  67  Edison  Electric  Light  Co.  v. 


CHAP.    VII.]  LETTERS    PATENT  '207 

patent  terminated  before  the  United  States  patent  for 
the  same  invention  was  applied  for,  the  latter  is  void 
ab  initio;™  though  where  the  foreign  patent  terminated 
while  the  application  for  the  corresponding  United  States 
patent  was  pending  in  the  Patent  Office,  the  latter  patent 
is  not  thus  void,  but  is  limited  by  the  foreign  patent, 
the  same  that  it  would  have  been  limited,  if  it  had  been 
issued  the  same  day  that  it  was  applied  for.69  And  a 
repeal  ab  initio,  of  a  foreign  patent  which  would  otherwise 
limit  the  duration  of  a  corresponding  United  States  pat- 
ent, restores  the  latter  to  its  full  term  of  seventeen  years.70 

It  is  not  necessary  to  the  validity  of  a  United  States 
patent  granted  for  an  invention  which  was  previously 
patented  in  a  foreign  country,  that  it  shall  appear  on  its 
face  to  be  so  limited  as  to  expire  at  the  same  time  with  the 
foreign  patent  which  limits  its  life.71  The  statute  is  satis- 
fied when  the  courts  decline  to  enforce  it  after  the  expira- 
tion of  that  foreign  patent,  whether  or  not  it  appears  on 
its  face  to  be  so  limited.72 

And  the  duration  of  a  patent  should  never  be  limited 
because  of  the  expiration  of  a  foreign  patent,  if  there  is 
any  doubt  about  the  invention  covered  by  the  two  pat- 
ents being  substantially  the  same.73     But  differences  of 

Perkins  Electric  Lamp  Co.,   42  Co.  v.  Hammond,  129  U.  S.  151, 

F.  R.  327,  1890.  1889. 

68  Huber  v.   Nelson  Mfg.   Co.,  72  New  American   File   Co.   v. 

148  U.  S.  275,  1893.  Nicholson  File  Co.,  8  F.  R.  816, 

89  Welsbach  Light  Co.  v.  Apollo  1881;  Canan  v.  Mfg.  Co.,  23  F.  R. 

Incandescent    Gaslight    Co.,    96  185,  1885. 

F.  R.  335,  1899.  73  Brush  Electric  Co.  v.  Julien 

70  Bate  Refrigerating  Co.  v.  Gil-  Electric  Co.,  41  F.  R.  696,  1890; 
lett,  20  F.  R.  192,  1884.  Brush  Electric  Co.  v.  Accumula- 

71  Telephone  Cases,  126  U.  S.  tor  Co.,  47  F.  R.  52,  1891;  Aquar- 
572,    1888;    Bate    Refrigerating  ama  Co.  v.  Old  Mill  Co.,  124  F.  R. 

229,  1903. 


'JOS  LETTERS  PATENT         [CHAP.  VII. 

description  or  of  details,  do  not  necessarily  involve  differ- 
ences of  invention; 74  and  the  true  test  of  identity  consists 
in  ascertaining  and  deciding  whether  the  practice  of  what 
is  described  in  the  foreign  patent,  would  constitute  an 
infringement  of  the  United  States  patent.75  In  other 
words,  the  court  "must  look  through  the  mere  form  of 
phraseology  and  determine  what  was  the  essence  of  the 
invention  of  the  foreign  patent."  7G 

A  foreign  patent  for  an  apparatus  for  performing  a 
method  is  not  for  the  same  invention  as  a  domestic  patent 
for  performing  the  method.77  Stated  more  broadly,  where 
dependent  and  related  inventions  are  covered  by  a  United 
States  patent,  as,  for  example,  an  invention  of  a  machine 
combined  with  an  invention  of  a  process,  a  foreign  patent 
for  either  invention  does  not  affect  the  other.78  And  to  go 
still  further  such  claims  as  cover  inventions  patented  in 
the  foreign  patent  will  expire  with  the  foreign  patent, 
while  the  remaining  claims  will  remain  in  force  till  the 
expiration  of  the  United  States  patent.78" 

The  law  set  forth  in  this  section  applies  to  no  patent 
which  was  originally  granted  prior  to  July  8,  1870;  and 
applies  to  no  reissue  of  any  patent  which  was  originally 

74  Siemens  v.  Sellers,  123  U.  S.  Co.  v.  Commercial  Acetylene  Co., 
283,  1887;  Commercial  Mfg.  Co.      192  F.  R.  321,  1911. 

v.  Fairbank  Co.,  135  U.  S.  192,  See  Leeds  &  Catlin  v.  Victor 

1890;     Thomson-Houston    Elec-  Talking  Machine  Co.,  213  U.  S. 

trie  Co.  v.  McLean,  153  F.  R.  883,  301,  1909. 

1907.  78  Leeds    &    Catlin    v.    Victor 

75  Commercial  Mfg.  Co.  v.  Fair-  Talking  Machine  Co.,  213  U.  S. 
bank  Co.,  135  U.  S.  194, 1890;  Ac-  301,  1909;  Fireball  Gas  Co.  v. 
cumulator  Co.  v.  Julien  Electric  Commercial  Acetylene  Co.,  239 
Co.,  57  F.  R.  609,  1893.  U.  S.  156,  1915. 

78  Commercial  Acetylene  Co.  v.         78°  Leeds   &    Catlin   v.    Victor 

Searchlight  Gas  Co.,  188  F.  R.  Talking  Machine  Co.,  213  U.  S. 

85,  1911.  301,  1909. 

77  Acme    Acetylene    Appliance 


CHAP.    VII. J  LETTERS   PATENT  209 

granted  before  that  date,  even  though  the  reissue  itself 
was  granted  after  that  date ; 79  and  applies  to  no  patent, 
the  original  application  for  which  was  filed  after  1897. 

§  170.  The  terms  of  all  United  States  patents  begin  at 
their  respective  dates.80  These  dates  cannot  be  later  than 
nine  months  after  the  day  on  which  the  respective  applica- 
tions are  allowed.81  Subject  to  that  limitation,  patents 
are  dated  and  issued  on  the  fourth  Tuesday  after  the 
Patent  Office  receives  the  final  fees  therefor,  respectively; 
except  where  those  fees  are  received  on  Friday,  Saturday, 
or  Monday,  and  in  those  cases  the  patents  are  dated  and 
issued  on  the  fifth  Tuesday  thereafter.82 

The  former  provision  that  "every  patent  shall  bear 
date  as  of  a  day  not  later  than  six  months  from  which  it 
was  passed  and  allowed  and  notice  thereof  was  sent  to  the 
applicant  or  his  agent"  was,  however,  directory  merely; 
and  so  when,  as  was  customary  with  the  Patent  Office 
when  an  excess  of  work  had  accumulated,  the  patent  was 
re-allowed  and  issued  on  a  later  date,  it  will  not  be  held 
void  for  that  reason.83 

§  171.  The  grantee  of  the  government,  in  cases  of  letters 
patent  for  inventions,  may  be  any  person  who  is  the  in- 
ventor; 84  or  may  be  his  assignee; 85  or  an  assignee  of  an 
assignee; 86  or  an  assignee  who  has  assigned  the  invention  ;87 

79  Badische  Anilin  &  Soda  Fab-  84  Revised  Statutes,  Section 
rik  v.  Hamilton  Mfg.  Co.,  3  Bann.      4886. 

&  Ard.  235,  1878.  85  Revised     Statutes,     Section 

80  Rein  v.  Clayton,  37  F.  R.  355,      4895. 

1889.  8*  Selden  v.  Gas  Burner  Co.,  1!) 

81  Revised  Statutes,  Section  Blatch.  544,  1881;  Elliott-Fisher 
4885,  as  amended  35  Stat.  246.  Co.    v.    Underwood    Typewriter 

82  Patent  Office  Rule  167.  Co.,  176  F.  R.  372,  1909. 

83  Western  Electric  Co.  v.  87  Consolidated  Electric  Light 
North  Electric  Co.,  135  F.  R.  79,  Co.  v.  Edison  Electric  Light  Co., 
1905.  25  F.  R.  719,  1885;  Consolidated 


210  LETTERS   PATENT  [CHAP.    VII. 

or  a  guardian  or  conservator  of  an  insane  inventor,  or  the 
representative  in  trust  of  his  estate;88  or  if  an  inventor 
dies  before  any  patent  is  granted  for  his  invention,  the 
right  to  obtain  the  patent  devolves  on  his  executor  or 
administrator,  in  trust  for  the  heirs  at  law  of  the  deceased, 
in  case  he  shall  have  died  intestate;  or  if  he  shall  have  left 
a  will  disposing  of  the  invention,  then  in  trust  for  his 
devisees.89  In  this  last  case  the  patent  may  be  granted 
to  the  executor  by  his  proper  personal  name,  without  any 
declaration  that  he  takes  in  his  representative  capacity ; 90 
and  the  same  thing  is  equally  true  in  cases  where  the  patent 
is  granted  to  an  administrator.  The  assignee  to  which  a 
patent  is  granted  may  be  a  corporation,  as  well  as  a  natural 
person ;  and  may  be  a  partnership  as  well  as  a  plurality  of 
persons.91 

Where  an  inventor  applies  for  a  patent  to  be  issued  to 
himself,  and  then  dies  before  any  patent  is  granted;  the 
patent  may  be  granted  in  his  name  as  patentee,  and  will 
be  valid  notwithstanding  his  prior  death;  and  the  title 
thereto  will  vest  in  his  executor  or  administrator,  if 
there  is  any,  whoever  he  may  be;  and  if  there  is  no 
executor  or  administrator,  the  title  will  ultimately  vest 
in  the  heirs  or  legatees  of  the  inventor,  whoever  they 
may  be.92 

Where  an  inventor  assigns  his  invention  before  making 
an  application  for  a  patent,  and  then  makes  such  an  appli- 

Electric  Light  Co.  v.  McKeesport  tinguisher  Co.  v.  Philadelphia  Ex- 
Light  Co.,  34  F.  R.  335,  1888.  tinguisher  Co.,  1  Bann.  &  Ard. 

88  30  Statutes  at  Large,  p.  915,      177,  1874. 

Ch.  227.  91  Fruit-Cleaning  Co.  v.  Fresno 

89  Revised  Statutes,  Section  Home  Packing  Co.,  94  F.  R.  849, 
4S96;  as  amended  by  Act  of  Feb.      jg99 

190818"'  and  ^  ACt  °f  May  23'         92  De  La  VerSne  Machine  Co- 

90  Stimpson  v.  Rogers,  4  Blatch.  »■  Featherstone,  147  U.  S.  211, 
330,  1859;  Northwestern  Fire  Ex-      1893. 


CHAP.    VII.]  LETTERS    PATENT  2 1  1 

cation,  coupled  with  a  request  that  the  patent  be  granted 
to  the  assignee,  and  accompanied  with  an  entry  of  the 
assignment  on  the  records  of  the  Patent  Office,  and  then 
dies  before  any  patent  is  granted;  there  appears  to  be  no 
reason  why  the  patent  should  not  be  granted  to  the  as- 
signee, though  the  statute  literally  provides  that  in  all 
cases  where  the  inventor  dies  before  the  patent  is  granted, 
the  right  to  the  patent  devolves  on  his  executor  or  admin- 
istrator in  trust  for  his  heirs  or  devisees.9  ^  But  this  statute 
must  receive  a  reasonable  construction,  and  it  is  not  rea- 
sonable to  hold  that  the  death  of  an  inventor,  who  has 
sold  and  assigned  his  inchoate  right  to  a  patent,  should 
operate  to  divest  his  assignee  of  that  right,  and  devolve  it 
upon  another  person,  in  trust  for  still  another  party.  Nor 
is  there  any  propriety,  in  such  a  case,  in  granting  the 
patent  to  the  executor  or  administrator,  on  the  theory 
that  he  will  take  as  trustee  for  the  assignee.  The  assignee 
requires  no  trustee,  for  his  inchoate  title  is  a  legal,  and  not 
a  merely  equitable  one ; 93  and  the  executor  or  adminis- 
trator, if  he  takes  at  all,  must  take  as  trustee  for  the  heirs 
or  devisees  of  the  inventor. 

Where  an  inventor  assigns  his  invention  and  dies  before 
making  any  application  for  a  patent,  a  difficulty  arises  for 
which  the  statute  affords  no  clear  solution.  In  such  a 
case,  it  is  provided  that  the  application  must  be  made  and 
sworn  to  by  the  executor  or  administrator,  for  an  assignee 
cannot  apply  for  a  patent  except  on  the  oath  of  the  in- 
ventor himself.94  It  is  also  provided,  that  where  an  exec- 
utor or  administrator  applies  for  a  patent,  he  must  take 
that  patent,  if  granted,  in  trust  for  the  heirs  or  devisees 

92a  Revised    Statutes,    Section         93  Hendrie  v.  Sayles,  98  U.S. 
4896,  as  amended  by  Act  May  23,      549,  1878.    See  Section  274. 
1908,  35  Stat.  245.  94  Revised     Statutes,    Sections 

4895,  4896,  Act  May  23,  1908. 


212  LETTERS    PATENT  [CHAP.    VII. 

of  the  inventor.95  Now  under  these  circumstances,  the 
law  must  do  one  of  three  things.  It  must  ignore  this  last 
provision,  and  hold  that  the  executor  or  administrator 
takes  in  trust  for  the  assignee;  or  it  must  impose  a  trust 
upon  a  trust,  by  holding  that  the  executor  or  adminis- 
trator takes  in  trust  for  the  heirs  or  devisees,  and  they 
take  in  trust  for  the  assignee;  or  it  must  deprive  the  as- 
signee of  his  right  altogether.  The  first  alternative  flies 
in  the  face  of  the  statute,  and  the  third  flies  in  the  face 
of  justice.  The  second  is  consistent  with  conscience,  and 
can  probably  be  adopted  and  enforced  by  courts  of 
equity. 

§  172.  Letters  patent  are  documents  consisting  of  the 
grant  and  the  specification;  and  where  drawings  form  a 
part  of  the  application,  they  also  form  a  part  of  the  letters 
patent,  and  will  be  examined  to  ascertain  the  true  mean- 
ing of  the  terms  used  in  describing  the  invention.95  The 
grant  is  a  paper,  issued  in  the  name  of  the  United  States, 
under  the  seal  of  the  Patent  Office,  and  signed  by  the 
Commissioner  of  Patents.97  It  contains  a  short  title  of 
the  invention,  and  purports  to  grant  to  the  patentee,  his 
heirs  or  assigns,  for  the  term  of  seventeen  years,  the  ex- 
clusive right  to  make,  use,  and  vend  the  invention, 
throughout  the  United  States  and  the  territories  thereof; 
and  it  refers  to  the  specification,  for  the  particulars  of  the 
invention  covered  by  the  grant,98  and  each  of  the  three 
rights  granted  by  letters  patent  is  a  separate  substantive 
right.99 

95  Revised  Statutes,  Section  in  32  Statutes  at  Large,  Pt.  1, 
4896,  as  amended  35  Stat.  245.  Ch.  417,  p.  95. 

96  Steiner  &  Voeghtly  Hardware  98  Revised  Statutes,  Sections 
Co.  v.  Tabor  Sash  Co.,  178  F.  R.  4883,  4884. 

831,  1910.  99  Adams   v.    Burke,    17   Wall. 

97  Revised  Statutes,  Section  453,  1873;  Tuttle  v.  Matthews,  28 
4883,  as  amended  April  11,  1902,      F.  R.  98,  1886. 


CHAP.    VII.]  LETTERS   PATENT  213 

Letters  patent  are  valid  where  the  grant  is  signed  by  an 
Acting  Commissioner  of  Patents;  and  letters  patent,  so 
signed,  are  admissible  in  evidence  without  any  pleading  or 
proof  of  his  title  to  his  office.  Courts  take  judicial  notice 
of  the  persons  who  preside  over  the  departments  or 
bureaus  of  the  government,  whether  permanently  or 
temporarily;  and  the  production  of  their  commissions  is 
not  necessary  to  support  their  official  acts.100  So  also, 
since  July  11,  1890,  the  Assistant  Commissioner  of  Pat- 
ents has  had  jurisdiction  to  sign  the  grants  of  letters 
patent  for  inventions,  whenever  the  Commissioner  has 
assigned  him  to  perform  that  function.101 

A  misnomer  of  the  patentee,  in  a  grant,  does  not  in- 
validate the  patent,  if  he  can  be  identified  by  means  of 
any  description  which  the  letters  patent  may  contain.102 
If  the  letters  patent  contains  no  means  for  correcting  the 
misnomer,  it  may  be  corrected  by  the  proper  officers  of 
the  government,  whenever  those  officers  become  convinced 
of  the  mistake.103 

But  regularly  executed  letters  patent  cannot  be  altered 
in  character  by  the  Commissioner  of  Patents,  except  after 
a  surrender,  and  by  means  of  a  reissue,  and  any  such  alter- 
ation otherwise  made,  is  void  for  want  of  jurisdiction  in 
the  Commissioner  to  make  it. 104  But  where  an  alteration 
has  been  actually  made  by  the  Commissioner  of  Patents, 
at  the  request  of  the  patentee,  and  where  some  party  has 
relied  upon  the  validity  of  that  alteration,  to  the  extent 
of  embarking  in  business  because  of  it,  the  patentee  may 

100  York  &  Maryland  Line  Rail-  guisher  Co.  v.  Philadelphia  Ex- 
road  Co.  v.  Winans,  17  Howard,  tinguisher  Co.,  1  Bann.  &  Ard. 
30,  1854.  177,  1874. 

101  United  States  v.  Duell,  95  103  Bell  r.  Hearne,  19  Howard, 
O.  G.  1052,  1901.  262,  1856. 

102  Northwestern    Fire    Extin-  104  Edison  Electric  Light  Co.  v. 


214  LETTERS    PATENT  |('HAP.    VII. 

be  estopped  from  denying  that  validity,  as  against  that 
particular  party.1"'' 

§  173.  The  word  "specification,"  whenever  it  is  used 
in  the  statute  without  the  word  "claim,"  covers  both  the 
claim  and  the  description;  and  whenever  it  is  used  with 
the  word  "claim,"  it  covers  the  description  only.100  The 
first  is  its  more  general  meaning,  and  to  avoid  confusion 
it  is  never  used  in  any  other  sense  in  this  book.  The 
proper  characteristics  of  specifications  are  herein  explained 
by  explaining  the  proper  characteristics  of  descriptions 
and  claims,  which  are  the  component  parts  of  specifica- 
tions. 

§  174.  The  description  of  the  invention,  which  forms  a 
part  of  every  specification,  is  required  to  set  forth  that  in- 
vention, and  the  manner  and  process  of  making  and  using 
it,  in  such  full,  clear,  concise,  and  exact  terms  as  to  enable 
any  person  skilled  in  the  art  or  science  to  which  it  apper- 
tains, or  with  which  it  is  most  nearly  connected,  to  make 
and  use  the  same;  and  in  case  of  a  machine,  the  descrip- 
tion is  required  to  explain  the  principle  thereof,  and  the 
mode  of  applying  that  principle  which  the  inventor  be- 
lieves to  be  the  best. 107  Where  the  essence  of  the  invention 
is  the  location,  form,  size  or  any  other  characteristic 
of  the  means  employed,  the  patent  must  distinctly  specify 
the  peculiarities  which  characterize  the  invention.108  The 
pointing  out  of  a  form,  composition  or  construction  of  a 
mechanical  element  in  accordance  with  the  statute  when 
those  characteristics  are  not  essential  to  the  combination 

U.  S.  Electric  Lighting  Co.,  52  10V  Revised    Statutes,     Section 

F.  R.  312,  1892.  4888;    Continental    Paper    Bag 

105  Edison  Electric  Light  Co.  v.  Co.  v.  Eastern  Paper  Bag  Co., 

Buckeye  Electric  Co.,  59  F.  R.  210  U.  S.  405,  1908. 

699,  1894.  108  Am.  Lava  Co.  v.  Steward, 

108  Wilson  v.  Coon,  18  Blatch.  155  F.  R.  731, 1907. 
532,  1880. 


CHAP.    VII.]  LETTERS   PATENT  215 

or  improvement  is  not  a  limitation  and  does  not  deprive 
the  inventor  of  his  full  right  to  equivalents  or  preclude 
him  from  claiming  other  modes  of  application.109  Where 
the  patent  is  an  improvement  on  a  prior  patent  which  is 
referred  to  in  the  improvement  patent,  the  latter  should 
be  read  in  connection  with  the  former.110  The  phrase 
"any  person  skilled  in  the  art  or  science"  is  not  confined 
to  the  most  eminent  scientists,  nor  the  most  able  experts 
in  that  science  or  art;  but  it  also  indicates  persons  whose 
skill  may  stop  short  of  the  highest  excellence.111 

It  is  not  necessary  that  the  description  should  be  in- 
telligible to  every  intelligent  man,  nor  to  every  skillful 
mechanic.  If  it  can  be  understood  by  those  who  possess 
full  knowledge  of  the  prior  inventions  in  the  same  depart- 
ment of  art  or  science,  it  is  full,  clear,  concise,  and  exact 
enough  to  comply  with  the  statute.112  In  explaining  this 
point  of  law,  Justice  Bradley,  in  the  first  cited  decision, 
used  a  particularly  felicitous  illustration.  His  Honor  said : 
"When  an  astronomer  reports  that  a  comet  is  to  be  seen 
with  the  telescope,  in  the  constellation  of  Auriga,  in  so 
many  degrees  of  declination,  and  so  many  hours  and  min- 
utes of  right  ascension,  it  is  all  Greek  to  the  unskilled  in 
science;  but  other  astronomers  will  instantly  direct  their 
telescopes  to  the  very  point  in  the  heavens  where  the 
stranger  has  made  his  entrance  into  our  system.  They 
understand  the  language  of  their  brother  scientist.  If  a 
mechanical  engineer  invents  an  improvement  on  any  of 
the  appendages  of  a  steam-engine,  such  as  the  valve- 

109  J.  L.  Owens  Co.  v.  Twin  City  U.  S.  580,  1881;  Celluloid  Mfg. 
Separator  Co.,  168  F.  R.  259, 1909.  Co.  v.  Russell,  37  F.  R.  679,  1889  ; 

110  Los  Alamitos  Sugar  Co.  v.  Lalance  &  Grosjean  Mfg.  Co.  v. 
Carroll,  173  F.  R.  280,  1909.  Haberman  Mfg.  Co.,  55  F.  R. 

111  Tannage  Patent  Co.  v.  Zahn,  296,  1893;  Weston  Electrical  In- 
66  F.  R.  989,  1895.  strament  Co.  v.  Stevens,  119  F.  R, 

112  Loom   Co.   v.   Higgins,    105  184,  1902. 


21 G  LETTERS    PATENT  [CHAP.    VII. 

gear,  the  condenser,  the  steam-chest,  the  walking-beam, 
the  parallel  motion,  or  what  not,  he  is  not  obliged,  in  order 
to  make  himself  understood,  to  describe  the  engine,  nor 
the  particular  appendage  to  which  the  improvement 
refers,  nor  its  mode  of  connection  with  the  principal  ma- 
chine. These  are  already  familiar  to  others  skilled  in 
that  kind  of  machinery.  He  may  begin  at  the  point  where 
his  invention  begins,  and  describe  what  he  has  made  that 
is  new,  and  what  it  replaces  of  the  old." 

These  observations  are  particularly  applicable  to  de- 
scriptions of  machinery;  but  they  also  suggest  the  true 
principles  on  which  to  judge  of  the  sufficiency  of  de- 
scriptions of  processes,  manufactures,  and  compositions 
of  matter.113 

A  patent  for  a  process,  must  not  only  distinguish  its  new 
elements  from  the  old  elements  with  which  they  are  em- 
ployed, but  also  must  describe  the  new  elements  so  def- 
initely, as  to  furnish  a  clear  chart  for  their  practical  in- 
troduction into  the  art  to  which  the  process  pertains.111 
If  there  is  enough  in  the  patent  to  indicate  to  those  skilled 
in  the  art  a  mechanism  whereby  the  process  may  be 
carried  out,  it  is  sufficient  even  though  no  specific  mechan- 
ism is  described.115  The  patentee  is  not,  of  course,  con- 
fined to  the  particular  apparatus  which  he  describes  as  a 
means  of  carrying  out  his  process.116  In  a  case  of  an  ar- 
ticle of  manufacture,  where  proportion  is  important  to 
operativeness,  the  proper  proportions  may  be  indicated  in 
any  way  that  is  substantially  correct,  and  need  not  be 
stated  mathematically.117  And  where  proportions  must 
vary  with  circumstances,  such  a  description  is  sufficient, 
if  it  states  the  proportions  proper  under  ordinary  circum- 

113Seabury  v.  Am  Ende,   152  Bradford,   214  U.   S.  366,   1909. 

U.  S.  567,  1894.  116  Moore  Filter  Co.  v.  Tonopah- 

114  Cerealine  Mfg.  Co.  v.  Bates,  Belmont  Development  Co.,  201 
101  F.  R.  280,  1900.  F.  R.  532,  1912. 

115  Expanded     Metal     Co.     v.  m  Edison  Electric  Light  Co.  v. 


CHAP.    VII.]  LETTERS    PATENT  217 

stances,  and  points  out  the  direction  in  which  they  must 
he  varied  when  circumstances  are  changed.1"  In  a  case 
of  a  composition  of  matter,  the  description  of  a  patent 
should  state  the  component  parts  thereof,  and  the  pro- 
portions in  which  they  are  to  be  mixed  or  combined,  and 
should  do  this  with  clearness  and  precision,  and  should 
not  leave  the  public  to  ascertain  any  such  fact  by  experi- 
ment.119 

A  patent  for  a  design  must  conform  to  the  same 
standards  12°  but  a  verbal  description  is  not  necessary  if 
the  drawing  is  sufficiently  clear.1-1  It  is  held,  however, 
that  where  there  is  a  sufficient  written  specification  the 
patentee  is  entitled  to  enjoin  the  making  of  articles  which 
"contain  the  dominant  features  of  the  design,"  as  specified 
in  the  description.  In  other  words,  where  there  is  no 
written  description  the  patentee  is  limited  to  the  precise 
article  shown  in  the  drawing,  but  the  scope  of  the  claim 
may  be  broadened  if  the  dominant  features  of  the  design 
are  specified  in  a  written  description.122 

§  175.  An  inventor  need  not  explain  in  his  description, 
or  know  in  point  of  fact,  what  laws  of  nature  those  are 
which  cause  his  invention  to  work;123  nor  is  a  patent 

U.  S.  Electric  Lighting  Co.,  52  &  Brooklyn  Casket  Co.,  185  F.  R. 

F.  R.  309,  1892.  533,  1911;  Ashley  v.  Samuel  C. 

118  Consolidated  Valve  Co.  v.  Tatum  Co.,  186  F.  R.  339,  1911; 
Valve  Co.,  113  U.  S.  177,  1884.  Phoenix  Knitting  Works  v.  Louer 

119  Wood  v.  Underhill,  5  How-  Bros.,  194  F.  R.  700,  1910;  Bush 
ard,  1,  1847;  Tyler  v.  Boston,  7  &  Lane  Piano  Co.  v.  Becker  Bros., 
Wallace,  327,  1868;  Matheson  v.  209  F.  R.  233,  1913. 
Campbell,  69  F.  R.  603,  1895;  Contra,  Phoenix  Knitting  Works 
Burke  Electric  Co.  v.  Independent  v.  Rich,  194  F.  R.  708,  1911. 
Pneumatic  Tool  Co.,  232  F.  R.  122  Ashley  v.  Weeks-Numan  Co., 
145,  1916.  220  F.  R.  899,  1915. 

120  James  E.  Tompkins  Co.  v.  123  St.  Louis  Stamping  Co.  v. 
New  York  Woven  Wire  Mattress  Quinby,  4  Bann.  &  Ard.  195, 
Co.,  159  F.  R.  133,  1907.  1879;  Haffcke  v.  Clark,  46  F.  R. 

121  Cheney  Bros.  v.  Weinreb  &  770,  1891;  Dixon- Woods  Co.  v. 
Weinreb,  185  F.  R.  531,  1910;  Pfeifer,  55  F.  R.  395,  1893; 
National  Casket  Co.  v.  New  York  Hemolin    Co.    v.    Harway    etc., 


218 


I.KT'lT.ltS    I'ATKNT 


[chap.  VII. 


void  on  the  ground  that  the  principle  of  the  invention  is 
not  fully  understood;  or  if  understood  by  anyone,  not 
understood  alike  by  all,124  and  was  not  understood  cor- 
rectly by  the  inventor  himself,125  or  that  all  its  advantages 
and  possibilities  were  not  understood  by  or  known  to 
the  inventor.120  Neither  is  any  description  insufficient  in 
the  eye  of  the  law,  on  account  of  any  mere  errors  it  may 
be  found  to  contain,  where  those  errors  would  at  once 
be  detected  and  their  remedies  be  known,  by  any  person 
skilled  in  the  art,  when  making  specimens  of  the  inven- 
tion set  forth,  or  when  practicing  that  invention,  if  that 
invention  is  a  process;  127  nor  where  such  errors  consist  in 
mistaken   statements  of  immaterial  facts;  128  nor  where 


Mfg.  Co.,  138  F.  R.  54,  1905; 
Van  Epps  v.  United  Box  Board  & 
Paper  Co.,  143  F.  R.  869,  1906; 
Commercial  Acetylene  Co.  v. 
Avery  Portable  Light  Co.,  166 
F.  R.  907, 1909;  Diamond  Rubber 
Co.  v.  Consolidated  Tire  Co.,  220 
U.  S.  428,  1911;  Toch  v.  ZibeU 
Damp  Resisting  Paint  Co.,  233 
F.  R.  993,  1916. 

124  Knickerbocker  Co.  v.  Rogers, 
61  F.  R.  297,  1894;  National  Me- 
ter Co.  v.  Thomson  Meter  Co., 
106  F.  R.  538,  1900. 

125  United  States  Mitis  Co.  v. 
Carnegie  Steel  Co.,  89  F.  R.  346, 
1898;  Emerson  Co.  v.  Nimocks,  , 
99  F.  R.  739,  1900;  Cleveland 
Foundry  Co.  v.  Detroit  Vapor 
Stove  Co.,  131  F.  R.  853,  1904; 
(process)  U.  S.  Mitis  Co.  v.  Mid- 
vale  Steel  Co.,  135  F.  R.  103, 
1904;  Hemolin  Co.  v.  Harway 
etc.,  Mfg.  Co.,  138  F.  R.  54,  1905; 


Malignani  v.  Jasper  Marsh,  etc., 
Co.,  180  F.  R.  442,  1910. 

126  Westmoreland  Specialty  Co. 
v.  Hogan,  167  F.  R.  327,  1909; 
Morgan  Engineering  Co.  v.  Al- 
liance Mach.  Co.,  176  F.  R.  100, 
1909;  Mead-Morrison  Mfg.  Co. 
v.  Exeter  Machine  Works,  225 
F.  R.  489,  1915;  Wayne  Mfg.  Co. 
v.  Coffield  Motor  Co.,  227  F.  R. 
987,  1915;  Kellog  Switchboard 
Co.  v.  Dean  Electric  Co.,  182 
F.  R.  991,  1910. 

See  Section  180. 

127  Singer  v.  Walmsley,  1  Fisher, 
559,  1860;  Kendrick  v.  Emmons,  2 
Bann.  &  Ard.  210,  1875;  Mathe- 
son  v.  Campbell,  78  F.  R.  910, 
1897;  Brunswick-Balke-Collender 
Co.  v.  Backus,  etc.,  Co.,  153  F.  R. 
288,  1907. 

128  Maryland  Hominy  Co.  v. 
Dorr,  46  F.  R.  776,  1891;  Electric 
Smelting    &    Aluminum    Co.    v. 


CHAP.    VII.]  LETTERS    PATENT  219 

such  errors  relate  to  the  degree  of  efficiency  of  the  in- 
vention; 129  nor  where  they  consist  in  deficient  description 
of  the  functions  of  some  parts  of  a  machine.130  Nor  need 
a  description  state  every  use  to  which  the  described  and 
claimed  invention  is  applicable,  in  order  to  cover  every 
such  use.131  Neither  is  it  necessary  in  a  description  in  a 
patent  for  a  process,  to  set  forth  all  the  modes  in  which 
that  process  may  be  performed,  nor  all  the  kinds  of  ap- 
paratus which  may  be  used  in  performing  it,  in  order  to 
cover  that  process  with  the  patent.  It  is  enough  to  de- 
scribe one  particular  mode  and  one  particular  apparatus 
by  means  of  which  the  process  may  be  performed  with  at 
least  some  beneficial  result.132  Nor  is  a  description  fatally 
defective  merely  because  it  omits  to  mention  something 
which  contributes  only  to  the  degree  of  benefit,  provided 
the  invention  will  work  beneficially  without  it.133 

But  the  omission  of  anything  absolutely  material  to  the 
utility  of  the  invention  described,  is  a  fatal  defect  in  a 
description,134  unless  that  omission  would  naturally  be 

Carborundum    Co.,    102    F.    R,  1907;  Warren  S.  P.  Co.  v.  Balke  & 

620,  1900.  Knowles  S.  P.  Works,  163  F.  R. 

129  Michaels    v.     Roessler,     34  263,  1908;  Forest  City  Foundry  & 

F.  R.  325,  1888.  Mfg.  Co.  v.  Barnard,  176  F.  R. 

130McCormick    Harvesting  561,  1910;  O'Brien-Worthen  Co. 

Mach.  Co.  v.  Aultman,  69  F.  R.  v.  Stempel,  209  F.  R.  847,  1913; 

378,  1895.  Kennicott  Co.  v.  Holt  Ice  &  Cold 

131  Pike  v.  Potter,  3  Fisher,  55,  Storage  Co.,  230  F.  R.  157,  1915. 

1859;   Williams   Patent   Crusher  132Tilghman    v.    Proctor,    102 

Co.  v.  St.  Louis  Pulverizer  Co.,  U.  S.  728,  1880;  Pittsburgh  Re- 

104  F.   R.   799,    1900;   Sanitary  duction  Co.   v.   Cowles  Co.,   55 

Fireproofing,  etc.,  Co.  v.  Spricker-  F.  R.  316,  1893;  Rapid  Service 

hoff,  139  F.  R.  801,  1905;  Kuhl-  Store  Co.  v.  Taylor,  43  F.  R.  251, 

man  Electric  Co.  v.  General  Elec-  1890. 

trie  Co.,   147  F.   R.   709,   1906;  133  Sewall  v.  Jones,  91  U.  S.  185, 

General  Electric  Co.  v.  Bullock  1875. 

Electric  Mfg.  Co.,  152  F.  R.  427,  134  Carr  v.  Rice,  1  Fisher,  204, 


220  LETTERS    PATENT  [('HAP,    VII. 

supplied  by  any  person  skilled  in  the  art  when  making 
the  invention,  if  it  be  a  thing,  or  when  using  it,  if  it  be  a 
process.  Accordingly,  it  has  been  held  that  where  one 
element  of  a  new  combination  covered  by  a  patent  must 
have  a  certain  form  in  order  to  operate  in  that  combina- 
tion, and  where  another  form  of  that  element  is  known 
to  persons  skilled  in  the  art,  a  description  is  insufficient 
which  merely  states  that  such  old  element  is  a  part  of 
the  combination,  without  saying  or  showing  which  of 
its  known  forms  is  applicable  to  the  case.135  As  was 
said  in  an  important  case  of  recent  date,  "A  patent  is 
granted  for  solving  a  problem,  not  for  stating  one.  Its 
description  must  explain  the  invention  itself,  the  manner 
of  making  it,  and  the  mode  of  putting  it  in  practice.  In 
the  absence  of  knowledge  on  these  points,  the  invention 
is  not  available  to  the  public  without  further  experiments 
and  further  exercise  of  inventive  skill."  136  On  the  other 
hand,  no  excess  of  description  is  injurious  to  the  validity 
of  a  patent,  unless  the  redundant  matter  was  introduced 
with  fraudulent  intention.137 

§  176.  The  claim  or  claims  of  a  specification  are  neces- 
sarily inserted  in  order  to  conform  to  the  statutory  re- 
quirement that  the  patentee  shall  particularly  point  out 
and  distinctly  claim  the  part,  improvement,  or  combina- 
tion which  he  claims  as  his  invention.138  A  distinct  and 
formal  claim  is  necessary  to  ascertain  the  scope  of  a 
patented  invention,139  and  a  patent  grants  no  exclusive 
right,  except  to  what  is  thus  distinctly  claimed.140    To  use 

1856;  Stirling  Co.  v.  Rust  Boiler  137  Sewall  v.  Jones,  91  U.  S.  186, 
Co.,  144  F.  R.  849,  1906.  1875. 

135  Schneider  v.  Thill,  5  Bann.  &  138  Revised    Statutes,    Section 


Ard.  565,  1880. 

136  Columbia  Motor  Car  Co.  v.  139  Grant  v.  Walter,  148  U.  S. 

C.  A.  Duerr  &  Co.,  184  F.  R.  893,  554,  1893. 

1911.  14°McClain   v.   Ortmayer,   141 


CHAP.    VII.]  LETTERS    PATENT  221 

the  words  of  the  Supreme  Court,  "the  claims  measure  the 
invention."  141 

A  claim  covers  and  secures  a  process,  a  machine,  a 
manufacture,  a  composition  of  matter,  or  a  design,  and 
never,  the  function  or  result  of  either.142  A  claim  may 
cover  the  entire  process,  machine,  manufacture,  or  com- 
position of  matter,  which  is  set  forth  in  the  description,  or 
it  may  cover  such  parts,  or  such  sub-processes,  or  such 
combinations,  as  are  new  and  useful  inventions;  and  the 
specification  may  contain  a  claim  for  the  whole,  and  other 
claims  for  separate  parts,  and  still  other  claims  for  sep- 
arate sub-processes  or  combinations.143  And  the  subject 
of  a  claim  needs  not  to  be  operative  alone,144  for  utility 
is  justly  ascribed  to  things  which  have  their  use  in  co- 
operating with  other  things  to  perform  a  useful  work. 
But  in  order  to  be  sustained,  each  claim  must  be  able 
to  withstand  the  tests  of  invention,  of  novelty,  and  of  util- 
ity, which  are  stated  in  the  second,  third,  and  fourth 
chapters  of  this  book,  respectively. 

Since  all  inventions,  devices  and  improvements  dis- 
closed by  the  specification  and  not  covered  by  a  claim 

U.S.  424, 1891;  Ashton  Valve  Co.  143  Railroad  Co.  v.  Dubois,  12 

v.  Muffler  Co.,  8  U.  S.  App.  226,  Wallace,  47,  1870;  National  Ma- 

1893;  United  States  Peg  Wood  chine  Co.  v.  Thorn,  25  F.  R.  500, 

Co.  v.  B.  F.  Sturtevant  Co.,  122  1885. 

F.  R.  472,  1903.  144  Deering  v.  Winona  Harves- 

i»  Continental  Paper  Bag  Co.  ter  Works,  155  U.  S.  302,  1894; 

v.  Eastern  Paper  Bag  Co.,  210  Hancock  Inspirator  Co.  v.  Jenks, 

U.  S.  405,  1908.  21  F.  R.  915,  1884;  Rapid  Service 

142  Corning  v.  Burden,  15  How-  Store  Co.  v.  Taylor,  43  F.  R.  251, 
ard,  252,  1853;  O'Reilly  v.  Morse,  1890;  Roberts  v.  Nail  Co.,  53  F.  R. 
15  Howard,  62,  1853;  Carver  v.  920,  1892;  Holloway  v.  Dow,  54 
Hyde,  16  Peters,  513,  1842;  Le  F.  R.  516,  1893;  Chambers- 
Roy  v.  Tatham,  14  Howard,  156,  Bering-Quinlan  Co.  v.  Faries,  75 
1852.  F.  R.  663,  1896. 


222  LETTERS   PATENT  [CHAP.    VII. 

are  dedicated  to  the  public;,115  all  claims  are  required  to  be 
definite,  so  that  the  public  may  know  what  they  are  pro- 
hibited from  doing  during  the  existence  of  the  patent, 
and  what  they  are  to  have  at  the  end  of  the  term,  as 
a  consideration  for  the  grant.146  The  necessary  degree 
of  particularity  in  claims  may  be  reached  in  various 
modes.  Where  the  invention  is  an  entire  machine, 
the  claim  is  sufficient  if  it  is  clearly  co-extensive  with 
the  machine;  and  where  the  invention  is  a  part  of  a 
machine  or  manufacture,  that  part  must  be  clearly  in- 
dicated in  the  claim  which  covers  it.147  Claims  for 
combinations  of  a  plurality  of  the  described  devices, 
but  less  than  all  of  them,  should  use  the  word  "combina- 
tion," and  should  state  the  devices  of  which  it  is  com- 
posed.148 But  though  this  degree  of  obvious  certainty  is 
highly  desirable  in  a  combination  claim,  it  is  not  absolutely 
necessary  to  the  validity  of  such  an  one;  for  a  claim  may 
declare  that  it  covers  so  much  of  the  described  mechanism 
as  effects  a  particular  specified  result,  without  specifying 
those  parts  themselves.  In  such  a  case  it  is  a  question 
of  fact  to  be  determined  in  court,  if  necessary,  which  parts 
those  are  which  effect  that  result  and  are  therefore  cov- 
ered by  the  claim.149  So,  also,  two  or  more  claims  in  sub- 
stance may  sometimes  be  combined  in  one  claim  in  form.150 
This  may  be  accomplished  in  different  ways,  and  among 
others  by  inserting  in  the  claim  the  words  "with  or  with- 
out" before  the  name  or  other  designation  of  one  or  more 

145  O.  H.  Jewell  Filter  Co.  v.  148  Brown  Mfg.  Co.  v.  Bradley 

Jackson,  140  F.  R.  340,  1905.  Mfg.  Co.,  51  F.  R.  226,  1892. 

See  Section  186.  149  Silsby  v.  Foote,  14  Howard, 

148  Brooks  v.  Fiske,  15  Howard,  218,  1852;  Fay  v.  Cordesman,  109 

212, 1853;  Buffington's  Iron  Bldg.  U.  S.  420,  1883;  Hoe  v.  Knap,  27 

Co.  v.  Eustis,  65  F.  R.  807,  1895.  F.  R.  208,  1886. 

147  Seymour  v.  Osborne,  11  Wal-  15°  Telephone  Cases,  126  U.  S. 

lace,  516,  1870.  537,  1888. 


CHAP.    VII.]  LETTERS   PATENT  223 

of  the  enumerated  parts  of  the  process,  machine,  combi- 
nation, manufacture,  or  composition  of  matter  covered 
by  that  claim.151  The  claim  of  the  Charles  Goodyear 
rubber  patent  had  this  characteristic.  It  was  a  claim  for 
vulcanized  India  rubber,  whether  with  or  without  other 
ingredients,  chemically  altered  by  the  application  of 
heat,  substantially  as  described.152 

A  process  and  its  product,  though  they  may  be  secured 
by  separate  claims  in  one  patent,153  cannot  be  covered  by 
one  claim.154  "A  new  product  having  definite  character- 
istics by  which  it  may  be  identified  and  which  distinguish 
it  apart  from  the  process  by  which  it  was  produced  may 
be  properly  described  by  such  characteristics  and  when  so 
claimed  and  described  the  claims  are  not  limited  to  the 
process."  155  The  same  court  which  made  the  statement 
above  quoted  also  said:  "It  is  also  a  well-recognized  rule 
that,  although  a  product  has  definite  characteristics  by 
which  it  may  be  identified  apart  from  the  process,  still 
if  in  a  qlaim  for  the  product  it  is  not  so  described  but  is 
set  forth  in  the  terms  of  the  process,  nothing  can  be  held 
to  infringe  the  claim  which  is  not  made  by  the  process" 
citing  Cochrane  v.  Badische  Anilin  &  Soda  Fabrik.155" 

151  Tuck  v.  Bramhill,  6  Blatch.  Co.,  184  F.  R.  620,  1910;  Hide- 
95,  1868.  Ite  Leather  Co.  v.  Fiber  Products 

152  Rubber  Co.  v.  Goodyear,  9  Co.,  226  F.  R.  34,  1915. 
Wallace,  795,  1869.  See    Steinmetz    v.    Allen,    192 

153  Kirchberger  v.  American  U.  S.  543,  1904,  and  compare 
Acetylene  Burner  Co.,  128  F.  R.  present  Patent  Office  Rule  41 
599,  1904;  Sanitas  Nut  Food  Co.  with  the  previous  rule. 

v.  Voight,  139  F.  R.  551,  1905;  164  Durand  v.  Schulze,  61  F.  R. 

Downes  v.  Teter-Heany  Develop-  820,  1894. 

ment  Co.,  150  F.  R.  122,  1907;  155Maurer   v.    Dickerson,    113 

Pressed  Prism  Plate  Glass  Co.  v.  F.  R.  870,  1901;  Hide-Ite  Leather 

Continuous  Glass  Press  Co.,  150  Co.  v.  Fiber  Products  Co.,  226 

F.  R.  355,  1907;  Asbestos  Shingle,  F.  R.  34,  1915. 

etc.,  Co.  v.  H.  W.  Johns-Mansville  155a  Cochrane  v.  Badische  Anilin 


224  LETTERS    PATENT  [CHAP.    VII. 

It  is  not  easy  to  deduce  the  correct  rule  of  law  which  is 
discussed  in  the  foregoing  paragraph.  The  leading  case 
in  the  Supreme  Court  on  the  subject  appears  to  be  Plum- 
mer  v.  Sargent.155''  The  patent  in  that  case  contained 
claims  both  for  a  process  of  bronzing  iron  and  for  the 
bronzed  iron  itself.  The  claim  for  the  product  was  as 
follows:  "What  I  claim  and  desire  to  secure  by  letters 
patent  is  the  new  manufacture  hereinabove  described 
consisting  of  iron  ornamented  in  imitation  of  bronze 
by  the  application  of  oil  and  heat,  substantially  as  de- 
scribed." Because  the  product  claim  called  for  iron  or- 
namented "by  the  application  of  oil  and  heat,"  no  bronzed 
iron  would  infringe  which  was  not  made  by  that  process 
even  though  the  product  was  of  the  composition  thereto- 
fore unknown  and  which  possessed  all  the  qualities  to 
give  it  the  character  of  an  invention.  The  court,  however, 
said:  "Although  there  are  two  patents,  one  for  a  process 
and  the  other  for  a  product,  there  is  in  effect  but  one  in- 
vention; and  it  may  be  assumed  that  the  new  article  of 
manufacture  called  Tucker  Bronze  is  a  product  which 
results  from  the  use  of  the  process  described  in  the  patent 
and  not  one  which  may  be  produced  in  any  other  way 
so  that  whatever  likeness  may  appear  between  the  product 
of  the  process  described  in  the  patent  and  the  article  made 
by  the  defendants  their  identity  is  not  established,  unless 
it  is  shown  that  they  are  made  by  the  same  process." 
As  is  pointed  out  in  Lamb  Knit  Goods  Co.  v.  Lamb  Glove 
Co.155C  a  patent  which  discloses  an  invention  of  a  new 
product  is  valid,  provided  it  discloses  a  method  of  making 
the  product  and  will  be  infringed  by  a  similar  product 

&  Soda  Fabrik,  111  U.  S.  293,  156c  Lamb  Knit  Goods  Co.   v. 

1884.  Lamb  Glove  Co.,  120  F.  R.  267, 

1556  Plummer    v.    Sargent,    120  1902. 
U.  S.  442,  1897. 


CHAP.    VII.]  LETTERS    PATENT  225 

even  though  the  latter  be  made  by  some  other  method 
than  that  described  in  the  patent.  It  is  likewise  true  as 
is  pointed  out  in  Sanitas  Nut  Food  Co.  v.  Voight,1  v'  that 
a  patent  which  discloses  and  claims  an  invention  of  a  proc- 
ess is  not  invalid  because  the  process  results  in  the  pro- 
duction of  an  old  and  well-known  product.  It  is  therefore 
not  apparent  why  the  case  of  Plummer  v.  Sargent  has  been 
cited  on  the  broad  proposition  that  a  patent  which  con- 
tains a  claim  for  a  product  and  a  claim  for  a  process  of 
making  the  product  is  not  infringed  by  a  product  which 
answers  the  product  claim,  but  which  is  not  made  in  in- 
fringement of  the  process  claimed.15'''  Difficulty  in  iden- 
tifying the  products  should  not  be  permitted  to  cause  to 
be  created  a  rule  of  law  which  prevents  a  patentee  from 
securing  his  full  rights  to  his  invention  of  a  product. 

Nor  is  any  claim  limited  to  any  name  it  employs  to 
designate  anything  to  which  it  refers,  where  that  name  is 
not  accurately  representative  of  the  thing  which  appears, 
in  the  description  of  the  patent,  to  be  designated  thereby.1'"1 
But  where  an  invention  consists  of  an  article,  made  of  a 
specific  material;  the  claim  must  specify  that  material, 
and  will  be  void  if  it  generalizes,  by  words  which  cover 

155<*Sanitas   Nut  Food   Co.  v.  velopment  Co.,   150  F.   R.   122, 

Voight,  139  F.  R.  551,  1905.  1907,  where  the  court  appears  to 

1556  See    Accumulator    Co.    v.  have  given  great  weight  to  the 

Julien  Electric  Co.,  57  F.  R.  605,  fact  that  the  product  claims  ended 

1893;  Carl  L.  Jensen  Co.  v.  Clay,  with  the  words  "substantially  as 

59  F.  R.  290,  1893;  Oval  Wood  described"  and  therefore  inferred 

Dish  Co.  v.  Dandy  Creek,  etc.,  that    these    words    meant     thai 

Mfg.  Co.,  60  F.   R.  285,   1894;  the   product  described  was  nec- 

Palmer   Pneumatic   Tire   Co.    v.  essarily  the  result  of  the  method 

Lozier,  90  F.  R.  732, 1898;  Chade-  described    and    claimed    in    the 

loid  Chemical  Co.  v.  F.  W.  Thurs-  patent. 

ton  Co.,  200  F.  R.  685,  1915;  but  156  Stetson  v.  Herreshoff  Mfg. 

see  Downes  v.  Teter-Heany  De-  Co.,  113  F.  R.  952,  1902. 


226  LETTERS   PATENT  [CHAP.    VII. 

materials  useless  for  the  purpose,  as  well  as  the  specific 
material  described  in  the  patent.157 

§  177.  Letters  patent  may  be  valid  as  to  one  or  more 
claims  while  being  invalid  as  to  one  or  more  other  claims  in 
the  same  specifications.158  In  contemplation  of  law  each 
claim  of  a  patent  is  considered  as  setting  forth  a  complete 
and  independent  invention,159  and  so  where  a  patent  con- 
tains two  claims  which  are  alike,  except  that  the  narrower 
one  of  them  calls  for  an  unpatentable  addition  to  what 
is  called  for  by  the  other,  the  narrower  claim  is  void.160 
But  two  claims  which  may  appear  to  be  alike  will,  if 
practicable,  be  construed  to  differ  rather  than  agree, 
because  there  is  a  presumption  that  no  applicant  will  do 
so  useless  and  inexpedient  an  act  as  to  repeat  a  claim.161 

Letters  patent  which  contain  a  needless  multiplication  of 
nebulous  claims,  calculated  to  mislead  the  public,  are 
void  for  that  reason,  if  for  no  other.162    But  a  patent  is 

157  Consolidated  Electric  Light  181  Campbell  Printing-Press  Co. 
Co.  v.  McKeesport  Light  Co.,  v.  Marden,  64  F.  R.  784,  1894; 
159  U.  S.  465,  1895.  National   Cash   Register   Co.    v. 

158  Russell  v.  Place,  94  U.  S.  American  Cash  Register  Co.,  53 
606,  1876.  F.  R.  370,  1892;  Lamson  Consoli- 

159  Railroad  Supply  Co.  v.  Hart  dated  Store  Service  Co.  v.  Hill- 
Steel  Co.,  222  F.  R.  261,  1915;  man,  123  F.  R.  419,  1903;  Ryder 
Veneer  Machinery  Co.  v.  Grand  v.  Schlichter,  126  F.  R.  487,  1903; 
Rapids  Chair  Co.,  227  F.  R.  419,  Boyer  v.  Keller  Tool  Co.,  127 
1915;  Leeds  &  Catlin  v.  Victor  F.  R.  130,  1904;  Bullock  Electric 
Talking  Machine  Co.,  213  U.  S.  Mfg.  Co.  v.  Crocker-Wheeler  Co., 
301,  1909;  Kennicott  Co.  v.  Holt  141  F.  R.  101,  1905;  Win.  B. 
Ice  &  Cold  Storage  Co.,  230  F.  R.  Scaife  &  Sons  Co.  v.  Falls  City 
157,  1915.  Woolen   Mills,   209   F.    R.   210, 

160  Featherstone  v.  Cycle  Co.,  53  1913;  Automatic  Recording  Safe 
F.  R.  116,  1892;  Packard  v.  Lac-  Co.  v.  Burns  Co.,  231  F.  R.  985, 
ing-Stud  Co.,  70  F.  R.  68,  1895;  1916. 

Consolidated  Car  Heating  Co.  v.  162  Carlton  v.  Bokee,  17  Wallace, 

American  Electric  Heating  Co.,      463,  1873. 
82  F.  R.  994,  1897. 


CHAP.    VII.]  LETTERS   PATENT  227 

not  void  merely  because  it  contains  a  plurality  of  claims, 
each  of  which  covers  the  same  thing,  and  covers  nothing 
else,  where  there  is  no  evidence  that  the  plural  claims  were 
made  with  intention  to  mislead.163  In  the  absence  of  such 
evidence,  the  surplus  claims  may  be  dismissed  from  con- 
sideration as  redundant.164 

If  all  the  claims  of  a  particular  patent  are  void,  either  for 
want  of  particularity  or  for  want  of  invention,  novelty, 
or  utility,  or  for  any  other  reason  or  reasons,  that  patent  is 
also  void,  even  though  one  or  more  valid  claims  might  have 
been  made  and  allowed  on  the  basis  of  the  descriptive  part 
of  the  specification.165 

And  any  claim  which  is  broader  than  the  described  in- 
vention, is  void;  even  where  that  invention  is  valuable,  and 
could  have  supported  a  valuable  claim.166 

§  177a.  Inventions  like  animals,  are  divisible  into 
classes;  and  their  classes  are  divisible  into  orders;  and  their 
orders  are  divisible  into  genuses;  and  their  genuses  are 
divisible  into  species;  and  their  species  are  divisible  into 
varieties.  Every  invention  belongs  to  a  variety;  whether 
it  was  the  first  invention  in  that  variety  or  not.  In  either 
case  it  belongs  to  a  species ;  whether  or  not  it  was  the  first 
representative  of  that  species.  In  either  case  it  belongs 
to  a  genus ;  whether  it  was,  or  was  not,  the  first  invention 
in  that  genus.  In  either  case  it  belongs  to  an  order; 
whether  it  was  the  first  invention  in  that  order,  or  was 
preceded  therein,  by  some  other.  And  in  either  case  it 
belongs  to  a  class;  whether  or  not  it  stands  at  the  head 
of  the  class  to  which  it  belongs. 

163  Tompkins  v.  Gage,  5  Blatch.  188  Edison  v.   American  Muto- 

270,  1861.  scope    Co.,     114     F.     R.    934, 

184  Hillbom  v.  Hale  &  Kilburn  1902;    State    Bank    of    Chicago 

Mfg.  Co.,  69  F.R.  961,1895.  v.    Hillmans,    180    F.    R.    732, 

165  Wisner  v.  Grant,  5  Bann.  &  1910. 
Ard.  215,  1880. 


228  LETTERS    PATENT  [CHAP.    VII. 

Very  few  patents  are  still  in  force  which  stand  at  the 
heads  of  their  classes,  or  even  at  the  heads  of  the  orders 
which  they  were  the  first  to  represent.  But  some  patents 
are  still  living  at  the  heads  of  their  genuses;  and  many  are 
still  living  at  the  heads  of  their  species;  and  very  many 
more  at  the  heads  of  their  varieties.  A  patent  which 
stands  at  the  head  of  its  genus,  must  also  stand  at  the 
head  of  every  species  in  that  genus.  Such  a  patent  may 
properly  have  a  generic  claim,  and  it  may  also  have  one 
specific  claim.  Logically,  it  might  have  a  specific  claim 
for  each  species  which  it  describes;  but  the  Patent  Office 
properly  requires  a  separate  application  for  a  separate 
patent,  for  each  species  which  the  inventor  will  secure  to 
himself;  while  allowing  him  to  insert  his  proper  generic 
claim  in  whichever  of  those  applications  he  selects  for 
that  honor.  So  also  the  Patent  Office  will  properly  allow 
a  claim  on  a  variety  of  an  invention,  in  the  same  patent 
with  a  broader  claim  for  a  species,  and  a  still  broader  claim 
for  a  genus;  provided  that  variety  belongs  to  the  par- 
ticular species  which  is  covered  by  the  specific  claim. 

§  178.  The  statutory  requirements  relevant  to  particu- 
larity in  the  descriptions  and  claims  of  letters  patent,  are 
conditions  precedent  to  the  authority  of  the  Commissioner 
of  Patents  to  issue  such  documents ;  167  and  if  such  a  docu- 
ment is  issued,  the  description  or  claims  in  which  do  not 
conform  to  these  requirements,  then  that  document  is 
void.168  But  where  the  inventions,  which  are  covered  by 
part  of  the  claims  of  a  patent,  are  sufficiently  described, 
those  claims  may  be  valid,  though  other  claims  in  the 
same  patent  are  void  for  want  of  sufficient  description.169 

187  Seymour  v.  Osborne,  11  Wal-  ard,  62,  1853;  Ames  v.  Howard,  1 
lace,  516,  1870.  Sumner,  482,  1833. 

188  O'Reilly  v.  Morse,  15  How-  1M  Bene  v.  Jeantet,  129  U.  S. 

683,  1888. 


CHAP.    VII.]  LETTERS    PATENT  229 

Such  invalidity  does  not  depend  on  the  intention  of  the 
inventor,  but  is  a  legal  inference  from  his  failure  to  give  to 
his  description  and  claims  the  statutory  particularity.170 
It  is  a  question  of  jurisdiction  in  the  Commissioner  of 
Patents;  not  a  question  of  fraudulent  intent  in  the  de- 
linquent patentee.  The  Commissioner  is  authorized  to 
issue  letters  patent  only  on  adequate  specifications.  If 
he  issues  them  on  inadequate  specifications,  their  invalid- 
ity cannot  be  removed  by  showing  that  the  inadequacy 
arose  from  ignorance  and  not  from  fraud.  This  point  of 
law  is  not  shaken  by  the  fact  that  Section  4920  of  the 
Revised  Statutes,  in  providing  for  special  defences  to 
patent  suits,  under  the  general  issue  in  pleading,  provides 
that  among  such  defences  the  defendant  may  prove  "that 
for  the  purpose  of  deceiving  the  public,  the  description 
filed  by  the  patentee  in  the  Patent  Office  was  made  to 
contain  less  than  the  whole  truth  relative  to  the  invention 
or  discovery,  or  more  than  is  necessary  to  produce  the 
desired  effect."  The  defences  provided  for  in  Section  4920 
are  not  all  the  defences  that  may  be  interposed  in  infringe- 
ment cases.  They  are  merely  the  defences  that  may  be 
interposed  under  the  general  issue.  The  defence  of  in- 
sufficient specification,  as  well  as  any  other  legal  defence, 
may  be  interposed  by  a  special  plea,171  or  under  the  Equity 
Rules  promulgated  in  1912  by  special  matter  in  the  answer. 
§  179.  It  is  a  question  of  fact  for  a  jury  in  an  action  at 
law,  or  for  a  chancellor  in  an  action  in  equity,  to  de- 
termine whether  the  specification,  including  the  claim, 
of  a  patent  conforms  to  the  statutory  requirements 
relevant   to  particularity.172    That  question  is,  in  both 

170  Grant  v.  Raymond,  6  Peters,  172  Battin  v.  Taggert,  17  How- 
218,  1832.                                            ard,  74,  1854. 

171  Reckendorfer   v.    Faber,    92 
T.  S.  347,  1875. 


230  LETTERS   PATENT  [CHAP.    VII. 

tribunals,  a  question  of  evidence,  and  not  a  question 
of  construction.17'' 

§  180.  A  patent  which  describes,  and  separately  claims, 
two  or  more  related  inventions,  is  not  void  on  that  ac- 
count; l7i  but  if  a  patent  were  to  be  granted  for  two  or 
more  unrelated  inventions,  it  might  be  held,  for  that 
reason,  to  be  invalid,175  though  no  patent  has  ever  yet  been 
held  void  for  containing  and  claiming  more  than  one 
invention. 

Prior  to  the  Supreme  Court  decision  of  Steinmetz  v. 
Allen,176  Patent  Office  Rule  41  provided  among  other 
things  that  claims  for  a  machine  could  not  be  combined 
in  a  single  application  either  with  claims  for  the  product 
of  the  machine  or  with  claims  for  the  process  carried  out 
by  the  machine.  The  Supreme  Court,  however,  in  the 
Steinmetz  case  held  that  the  Patent  Office  could  not 
arbitrarily  create  such  a  rule,  since  it  was  a  question  of 
fact  in  each  case  as  to  whether  or  not  the  invention  of  the 
machine  was  so  related  to  the  invention  of  the  process, 
or  was  so  independent  of  it  that  the  two  inventions  should 
or  should  not  be  combined  in  one  application.  The  court 
based  its  view  that  related  inventions  could  be  combined 
in  one  application  on  its  construction  of  Section  4886  of 
the  Revised  Statutes.  Rule  41  has  since  been  amended 
and  the  provisions  above  noted  removed. 

On  the  other  hand,  two  or  more  related  patents  may 
lawfully  be  granted  for  different  parts  of  one  extensive 
machine.177     In  such  cases  it  is  proper  to  describe  the 

173  Fisk,  Clark  &  Flagg  v.  Hoi-  tener  Co.  v.  Webb,  89  F.  R.  989, 
lander,    Mac  Arthur   &    Mackay,      1898. 

355,  1883.  178  Steinmetz  v.  Allen,  192  U.  S. 

174  Hogg  v.  Emerson,  11  How-      543,  1904. 

ard,    587,    1850;    Steinmetz    v.         See  Section  183. 

Allen,  192  U.  S.  543,  1904.  177  Graham  v.   McCormick,   11 

175  Wilkins   Shoe   Button   Fas-      F.  R.  859,  1880;  Graham  v.  Mfg. 


CHAP.    VII.] 


LETTERS    PATENT 


231 


whole  machine  in  each  of  the  specifications,  and  to  picture 
the  whole  machine  in  each  set  of  drawings,  thus  causing 
the  separate  letters  patent  to  differ  from  each  other  only 
in  their  claims.178  A  plurality  of  patents  cannot,  however, 
be  granted  for  different  uses  of  the  same  invention.179  In- 
deed, all  the  uses  of  an  invention  are  covered  and  secured 
by  a  single  letters  patent  for  that  invention.180 

This  principle,  however,  applies  only  when  the  property 
or  function  is  inherent  in  the  invention  or  is  described  or 
claimed  therein,  but  where  such  property  or  function  is 
not  inherent  in  the  invention  and  is  not  described  or 
claimed,  and  especially  where  other  properties  or  functions 
are  described  as  essential,  it  is  significant  proof  that  the 
undescribed  property  is  not  a  part  of  the  invention.181 


Co.,  11  F.  R.  138, 1880;  Thomson- 
Houston  Electric  Co.  v.  Elmira  & 
H.  Ry.  Co.,  71  F.  R.  405,  1896. 

178  M'Millin  v.  Rees,  5  Bann.  & 
Ard.  269,  1880;  Ide  v.  Trorlicht, 
Duncker  &  Renard  Carpet  Co., 
115  F.  R.  145,  1902;  Anderson  v. 
Collins,  122  F.  R.  458,  1903; 
Century  Electric  Co.  v.  Westing- 
house  Electric  &  Mfg.  Co.,  191 
F.  R.  350,  1911. 

179  McComb  v.  Brodie,  1  Woods, 
153,  1871;  Thomson-Houston 
Electric  Co.  v.  Elmira  &  H.  Ry. 
Co.,  71  F.  R.  406,  1896. 

180  Roberts  v.  Ryer,  91  U.  S. 
157,  1875;  Western  Electric  Co. 
v.  La  Rue,  139  U.  S.  606,  1891; 
Potts  v.  Creager,  155  U.  S.  606, 
1893;  Ligowski  Clay-Pigeon  Co. 
v.  Clay-Bird  Co.,  34  F.  R.  331, 
1888;  Thompson  v.  Gildersleeve, 
34   F.   R.   45,    1888;   Stegner   v. 


Blake,  36  F.  R.  183, 1888;  Thomp- 
son v.  Donnell  Mfg.  Co.,  40  F.  R. 
383,  1889;  Steiner  Extinguisher 
Co.  v.  Adrian,  52  F.  R.  733,  1892; 
New  Departure  Bell  Co.  v.  Mfg. 
Co.,  64  F.  R.  862,  1894;  Wright  & 
Colton  Wire-Cloth  Co.  v.  Wire- 
Cloth  Co.,  67  F.  R.  792,  1895; 
National  Hollow  Brake-Beam  Co. 
v.  Interchangeable  Brake-Beam 
Co.,  106  F.  R.  709,  1901;  Dow- 
agiac  Mfg.  Co.  v.  Superior  Drill 
Co.,  115  F.  R.  886,  1902;  Jackson 
Fence  Co.  v.  Peerless  Wire  Fence 
Co.,  228  F.  R.  691,  1915  (see 
Section  175,  ante);  Gear  v.  Fair- 
mount  Electric  &  Mfg.  Co.,  231 
F.  R.  728,  1916;  Acme  Truck  & 
Tool  Co.  v.  Meredith,  183  F.  R. 
124,  1910. 

See  Section  175. 

181  Electric  Storage  Battery  Co. 
v.  Gould  Storage  Battery  Co.,  158 


232  LETTERS    PATENT  [CHAP.    VTT. 

§  180a.  Only  one  valid  original  patent  can  be  granted 
to  an  inventor  on  one  invention;  and  if  a  plurality  of  such 
patents  are  thus  granted,  all  except  the  first  arc  void.182 
Where  a  plurality  of  similar  or  approximating  original  pat- 
ents have  been  granted  to  an  inventor,  the  question  of  the 
identity  or  the  non-identity  of  the  inventions  may  there- 
fore arise;  and  when  such  a  question  arises,  it  must  be  de- 
termined by  the  application  of  the  relevant  rule  of  law. 
The  rule  for  ascertaining  whether  a  reissue  patent  is  for 
"the  same  invention"  within  the  meaning  of  the  reissue 
statute,  is  not  applicable  to  determining  the  question  of 
identity  between  two  original  patents;  because  a  reissue 
patent  is  held  to  be  for  "the  same  invention,"  within  that 
meaning,  where  that  invention  was  described  in  the  origi- 
nal patent,  and  appears  therein  to  have  been  intended  to 
be  secured  thereby,  whether  it  was  thus  secured  or 
not; 183  and  because  a  man  does  not  have  two  original 
patents  for  the  same  invention,  unless  each  of  those 
patents  purports  to  secure  to  him  a  monopoly  of  that  in- 
vention. And  no  monopoly  of  any  invention  is  secured 
to  any  patentee,  by  any  patent,  otherwise  than  by  a 
claim  in  that  patent,  which  is  co-extensive  with  that  in- 
vention.184    Therefore  the  rule  for  ascertaining  the  iden- 

F.  R.  610, 1907;  O'Brien-Worthen  Co.  v.  Eagle  Lock  Co.,  150  U.  S. 

Co.   v.  Stempel,  209  F.  R.  847,  42,  1893. 

1913.  1S4  M'Millin  v.  Rees,  5  Barm.  & 

See  Section  364.  Ard.  269,  1880;  Delaware  Coal  & 

182  Suffolk  Co.  v.  Hayden,  3  Ice  Co.  v.  Packard,  5  Bann.  & 
Wallace,  315,  1865;  Miller  v.  Ard.  296,  1880;  Blades  v.  Rand, 
Eagle  Co.,  151  U.  S.  197,  27  F.  R.  97,  1886;  Roemer  v. 
1894.  Peddie,  27  F.  R.  702, 1886 ;  Allison 

183  Parker  &  Whipple  Co.  v.  v.  Brooklyn  Bridge,  29  F.  R.  517, 
Yale  Clock  Co.,  123  U.  S.  99,  1886;  McBride  v.  Plow  Co.,  44 
1887;  Freeman  v.  Asmus,  145  F.  R.  77,  1890;  Maddock  v. 
U.    S.    240,    1892;   Corbin   Lock  Coxon,  45  F.  R.  579,  1891. 


CHAP.    VII.]  LETTERS    PATENT  233 

tity  or  the  non-identity  of  the  invention  or  inventions  of  a 
plurality  of  resembling  original  patents  granted  to  one 
inventor,  is  the  same  as  the  rule  for  ascertaining  the 
identity  or  non-identity  of  the  invention  or  inventions  of  a 
plurality  of  resembling  original  patents  granted  to  a 
plurality  of  inventors.  And  that  rule  consists  in  com- 
paring the  claims  of  the  patents  in  question,  and  find- 
ing identity  or  non-identity  of  invention,  according  as 
those  claims  are  found  to  be  co-extensive  or  not  co- 
extensive.185 

Claims  are  co-extensive  which  cover  the  same  combina- 
tion, of  the  same  number,  of  the  same  parts,  with  the 
same  features;  though  the  functions  which  are  mentioned 
in  the  claims  are  not  co-extensive.186  That  was  held  to 
be  the  character  of  the  respective  claims  of  two  patents 
to  the  same  inventor,  in  the  case  of  Miller  v.  Eagle  Co.  ;187 
and  therefore  the  second  of  those  patents  was  held  to 
have  been  granted  for  the  same  invention  as  the  first, 
and  to  be  void.  But  two  claims  are  not  co-extensive, 
which  specify  different  combinations  of  parts  of  a  process, 
machine,  or  manufacture,  even  where  some  of  those  parts 

185  Gold  &   Silver  Ore   Co.   v.  189,      1894;     Thomson-Houston 

Disintegrating  Ore  Co.,  6  Blatch.  Electric  Co.  v.  Hoosick  Ry.  Co., 

311,   1869;  Morris  v.  Kempshall  82  F.   R.   466,   1897;  Thomson- 

Mfg.   Co.,  20  F.  R.   121,   1884;  Houston   Electric   Co.   v.   Union 

Pentlarge  v.  New  York  Bushing  Ry.   Co.,   86   F.    R.   636,    1898; 

Co.,  20  F.  R.  314,  1884;  Nathan  Thomson-Houston    Electric    Co. 

Mfg.  Co.  v.  Craig,  49  F.  R.  370,  v.  Jeffrey  Mfg.  Co.,  101  F.  R.  121, 

1892;  Dederick  v.  Fox,  56  F.  R.  1900. 

718,  1893;  Stonemetz  Mach.  Co.  187  Thomson-Houston  Electric 
v.  Brown  Mach.  Co.,  57  F.  R.  605,  Co.  v.  Elmira  &  H.  Ry.  Co.,  71 
1893;  Ryan  v.  Newark  Spring  F.  R.  406,  1S96;  Thomson- 
Mattress  Co.,  96  F.  R.  103,  1899;  Houston  Electric  Co.  v.  Ohio 
Tesla  Electric  Co.  v.  Scott,  97  Brass  Co.,  80  F.  H.  728,  1897; 
F.  R.  598,  1899.  Western   Electric    Co.    r.    Home 

i*>  Miller  v.  Eagle  Co.,  151  U.  S.  Telephone  Co.,  85  F.  R.  657, 1898. 


234 


LETTKRS    PATENT 


[CHAP.    VII. 


are  in  each  of  the  combinations;  188  because  the  claim 
which  specifies  fewest  of  those  parts,  may  be  infringed 
by  what  will  not  infringe  any  claim  specifying  more  of 
those  parts.189  That  was  held  to  be  the  character  of  the 
respective  claims  of  two  patents  to  the  same  inventor, 
in  the  case  of  Suffolk  Co.  v.  Hayden;  and  therefore  the 
second  of  those  patents  was  held  to  have  been  granted 
for  another  invention  than  the  first,  and  to  be  valid. 
And  two  claims  are  not  co-extensive,  where  one  of  them 
specifies  all  the  features  of  any  or  all  of  the  parts  of  its 
subject,  while  the  other  omits  one  of  those  features;  190 
because  the  latter  may  be  infringed  by  processes  or 
mechanisms  which  lack  that  feature,  while  the  former 
cannot.191    Of  course  a  later  application  which  specifies 


188  Suffolk  Co.  v.  Hayden,  3 
Wallace,  315,  1865;  Wheeler  v. 
McCormick,  11  Blatch.  334, 1873; 
Graham  v.  McCormick,  5  Barm. 
&  Ard.  244,  1880;  Graham  v. 
Crawford  Mfg.  Co.,  11  F.  R.  138, 
1880;  National  Mach.  Co.  v. 
Wheeler  &  Wilson  Mfg.  Co.,  72 
F.  R.  199,  1896;  Allington  & 
Curtis  Mfg.  Co.  v.  Glor,  83  F.  R. 
1014,  1897;  Allington  &  Curtis 
Mfg.  Co.  v.  Globe  Co.,  89  F.  R. 
865,  1898;  Palmer  v.  John  E. 
Brown  Mfg.  Co.,  92  F.  R.  929, 
1899;  Ryan  v.  Newark  Spring 
Mattress  Co.,  96  F.  R.  103,  1899; 
Dayton  Fan  &  Motor  Co.  v. 
Westinghouse  Electric  &  Mfg. 
Co.,  118  F.  R.  563,  1902. 

189  Vance  v.  Campbell,  1  Black, 
430,  1861;  Eames  v.  Godfrey,  1 
Wallace,  78,  1863;  Case  v.  Brown, 
2  Wallace,  320,  1864;  Dunbar  v. 


Myers,  94  U.  S.  187,  1876;  Fuller 
v.  Yentzer,  94  U.  S.  297,  1876; 
Fay  v.  Cordesman,  109  U.  S.  420, 
1883;  Rowell  v.  Lindsay,  113  U.  S. 
102,  1884;  Sargent  v.  Lock 
Co.,  114  U.  S.  86,  1884;  Shepard 
v.  Carrigan,  116  U.  S.  597,  1885; 
Yale  Lock  Co.  v.  Sargent,  117 
U.  S.  378,  1885;  Derby  v.  Thomp- 
son, 146  U.  S.  482, 1892;  Weather- 
head  v.  Coupe,  147  U.  S.  335, 
1893;  Dobson  v.  Cubley,  149  U.  S. 
120,  1893. 

190  Ryan  v.  Newark  Spring  Mat- 
tress Co.,  96  F.  R.  103,  1899. 

191  Prouty  v.  Ruggles,  16  Peters, 
341,  1842;  Sharp  v.  Reissner,  119 
U.  S.  636,  1886;  McClain  v.  Ort- 
mayer,  141  U.  S.  425,  1891; 
Wright  v.  Yuengling,  155  TJ.  S. 
52,  1894;  Black  Diamond  Coal 
Co.  v.  Excelsior  Co.,  156  U.  S. 
617,  1895. 


CHAP.    VII.]  LETTERS    PATENT  235 

broad  claims  which  cover  the  specific  invention  of  an 
earlier  application  is  void  to  the  extent  of  the  broad 
claims.192 

Where  a  plurality  of  approximating  original  patents 
have  been  granted  to  an  inventor;  and  where  the  ques- 
tion of  identity  of  subject  has  been  decided  in  the  nega- 
tive, or  must  evidently  be  so  decided;  the  question  may 
arise  whether  the  ascertained  difference  between  the  two 
subjects  is  a  patentable  difference.193  In  investigating 
that  question,  the  patent  which  was  applied  for  last, 
even  if  granted  first,  will  be  treated  as  the  junior  patent; 
since  the  dates  of  the  applications,  and  not  the  dates 
of  the  patents,  control  in  determining  the  legal  effect 
to  be  given  to  two  patents  issued  at  different  dates,  to 
the  same  inventor,  and  the  order  in  which  they  are  to  be 
considered.194 

§  181.  To  construe  letters  patent,  is  to  determine  pre- 
cisely what  inventions  they  cover  and  secure.  Nothing 
described  in  letters  patent,  is  secured  thereby,  unless  it  is 
covered  by  a  claim,195  and  no  element  not  mentioned  in  a 
claim  can  be  read  into  it  even  though  the  element  ap- 
pears in  the  specification.196    And  a  claim  which  is  clearly 

192  Otis  Elevator  Co.  v.  Port-  v.  Peddie,  27  F.  R.  702,  1886;  Al- 
land  Co.,  127  F.  R.  557.  lison  v.  Brooklyn  Bridge,  29  F.  R. 

193  Reynolds  v.  Standard  Paint  517,  1886;  McBride  v.  Plow  Co., 
Co.,  68  F.  R.  487,  1895;  Russell  ?>.  44  F.  R.  77,  1890;  Maddock  v. 
Kern,  72  0.  G.  590,  1895.  Coxon,  45  F.  R.  579, 1891 ;  Thom- 

194  Barbed  Wire  Patent,  143  son-Houston  Electric  Co.  v.  El- 
U.  S.  281,  1892.  mira  &  H.  Ry.  Co.,  71  F.  R.  404, 

195  Railroad  Co.  v.  Mellon,  104  1896;  Monroe  v.  McGreer,  81 
U.  S.  118,  1881 ;  M'Millin  v.  Rees,  F.  R.  956,  1897. 

5  Bann.  &  Ard.  269,  1880;  Dela-  196  Duncan  v.  Cincinnati  Butch- 
ware  Coal  &  Ice  Co.  v.  Packard,  ers'  Supply  Co.,  171  F.  R.  656, 
5  Bann.  &  Ard.  296, 1880;  Blades  v.  1909. 
Rand,  27  F.  R.  97,  1886;  Roemer 


236  LETTERS    PATENT  [CHAP.    VII. 

narrower  than  the  invention  which  it  was  designed  to 
cover,  cannot  be  broadened  by  construction  to  corre- 
spond with  that  invention.197  Nor  can  a  claim,  which  is 
broader  than  the  state  of  the  art  will  allow  to  the  inven- 
tion described,  be  narrowed  by  a  construction  out  of 
harmony  with  its  language.198  A  newly  discovered  method 
of  use  for  a  machine  cannot  be  availed  of  to  affect  the 
construction  of  a  claim  when  the  patent  on  its  face  gives 
no  indication  of  such  method.199  The  construction  of 
letters  patent  depends  therefore  upon  the  construction 
of  their  respective  claims; 200  and  the  established  rules 
by  means  of  which  claims  are  properly  construed  may 
constitute  the  next  subject  of  discussion. 

§  182.  The  phrase  " substantially  as  described,"  or  its 
equivalent,  when  such  a  phrase  occurs  in  a  claim,  throws 
the  investigator  back  to  the  description  for  means  of  con- 
struction; 201  and  that  phrase  is  always  implied  in  claims 
wherein  it  is  not  expressed.202    The  words  " substantially 

w  Smith  v.  Macbeth,  67  F.  R.  Patent,   23  Wallace,    181,   1874; 

140,    1895;   New   Home   Sewing  Telephone  Cases,  126  U.  S.  537, 

Machine  Co.  v.  Singer  Mfg.  Co.,  1887;    Consolidated    Roller    Mill 

68  F.  R.  226,  1895;  United  States  Co.  v.  Walker,  138  U.  S.  133, 1891 ; 

Glass  Co.  v.  Atlas  Glass  Co.,  88  Westinghouse  v.  Boyden  Power 

F.  R.  500,  1898;  Computing  Scale  Brake  Co.,  170  U.  S.  558,  1898; 

Co.    v.    Keystone    Store-Service  U.  S.  Consolidated  Seeded  Raisin 

Co.,  88  F.  R.  791, 1898;  Hardison  Co.  v.  Selma  Fruit  Co.,  195  F.  R, 

v.  Brinkman,  156  F.  R.  962,  1907.  264,  1912. 

198  Edison  v.  American  Muto-  202  Matthews  v.  Schoneberger,  4 
scope  Co.,  114  F.  R.  934,  1902.  F.  R.  635,  1880;  Westinghouse  v. 

199  U.  S.  Peg-Wood  Co.  v.  B.  F.  Air  Brake  Co.,  2  Bann.  &  Ard.  57, 
Sturtevant  Co.,  125  F.  R.  378,  1875;  Olds  v.  Brown,  41  F.  R.  704, 
1903.  1890;  Foos  Mfg.  Co.  v.  Thresher 

200  Maddock  v.  Coxon,  45  F.  R.  Co.,  44  F.  R.  599,  1891;  Bundy 
579,  1891.  Mfg.  Co.  v.  Columbian  Co.,  59 

2ni  Seymour  v.  Osborne,  11  Wal-  F.  R.  294,  1894;  O.  H.  Jewell 
lace,     516,     1870;     Corn-Planter      Filter  Co.  v.  Jackson,  140  F.  R. 


CHAP.    VII.J 


LETTERS    PATENT 


237 


as  specified"  mean  substantially  as  specified  in  regard 
to  the  particular  matter  which  is  the  subject  of  the 
claim; 203  and  the  same  rule  applies  with  the  same  force 
to  the  words  " substantially  as  described."  204    But  neither 


340,  1905;  National  Tube  Co.  v. 
Mark,  216  F.  R.  507,  1914. 

Some  courts  have,  contrary  to 
the  statement  in  the  text,  given  a 
special  significance  to  this  phrase 
to  the  extent  of  introducing  a 
qualification  into  an  element  of  a 
claim,  resulting  in  so  narrowing 
the  claim  that  the  claim  is  saved 
from  invalidity.  Sanders  v.  Han- 
cock, 128  F.  R.  424,  1904.  Other 
courts  have  even  gone  to  the  ex- 
tent of  reading  into  a  claim  a 
complete  new  element  if  neces- 
sary to  make  the  claim  operative. 
Wellman  v.  Midland  Steel  Co., 
106  F.  R.  226,  1901;  McCaslin  v. 
Link  Belt  Mach.  Co.,  139  F.  R, 
393,  1905.  In  American  Can  Co. 
v.  Hickmott  Asparagus  Co.,  142 
F.  R.  141,  1905,  it  is  stated  that 
these  words  "refer  to  the  whole 
claim  and  impart  nothing  into  it 
not  already  there,  either  to  nar- 
row it,  so  as  to  escape  anticipation 
or  to  broaden  it,  so  as  to  estab- 
lish infringement."  But  the  Su- 
preme Court  has  said  in  Singer 
Mfg.  Co.  v.  Cramer,  192  U.  S. 
265,  in  regard  to  the  words  "sub- 
stantially as  specified"  as  late  as 
the  year  nineteen  hundred  and 
four: 

"And  this  view  is  supported  by 
the  claim  in  question.     It  con- 


tains words  of  limitation.  It  is 
recited  therein  that  the  combina- 
tion is  to  be  'substantially  as 
specified,'  that  is,  as  described  in 
the  specification  and  shown  in  the 
drawings."  And  again: 

"To  prevent  a  broadening  of 
the  scope  of  the  invention  beyond 
its  fair  import,  in  the  light  of  the 
circumstances  surrounding  the 
issuance  of  the  patent,  the  words 
of  limitation  contained  in  the 
claim  must  be  given  due  effect, 
and,  giving  them  such  effect,  the 
statement  in  the  first  claim  of  the 
elements  entering  into  the  com- 
bination must  be  construed  to 
refer  to  elements  in  combination 
having  substantially  the  form 
and  construction  substantially  as 
described  in  the  specification  and 
shown  in  the  drawing." 

203  Lake  Shore  R.  R.  Co.  v.  Car 
Brake  Shoe  Co.,  110  U.  S.  235, 
1883;  Page  Fence  Co.  v.  Land,  49 
F.  R.  943,  1891;  Edison  Electric 
Light  Co.  v.  U.  S.  Electric  Light- 
ing Co.,  52  F.  R.  309,  1S92;  Mc- 
Kay &  Copeland  Lasting  Machine 
Co.  v.  Claflin,  58  F.  R.  354,  1893; 
Reece  Button-Hole  Mach.  Co.  v. 
Globe  Mach.  Co.,  61  F.  R.  961, 
1894;  Diamond  Drill  &  Mach.  Co. 
v.  Kelly  Bros.,  120  F.  R.  293, 1903. 

-04  Paul  Bovnton  Co.  v.  Morris 


238 


LETTERS   PATENT 


[CHAP.   VII. 


of  those  phrases  will  import  into  a  claim  any  unessential 
feature  of  the  subject  thereof;  205  nor  even  a  detail,  which 
was  said  to  be  best  in  the  specification,  but  was  afterward 
found  to  be  useless.206  The  implication  of  such  a  phrase, 
where  it  is  not  expressed,  follows  from  the  rule  that  while 
descriptions  are  considered  in  this  connection  only  for 
the  purpose  of  construing  claims,207  a  claim  should  always 
be  construed  in  the  light  of  the  description ; 20s  and  the 
certainty  of  that  implication  indicates  the  propriety  of 
omitting,  for  the  sake  of  brevity,  all  such  phrases  from 
claims.  An  uncommon  word  in  a  claim  is  to  be  construed 
in  the  light  of  the  description,  rather  than  in  the  light 
of  the  dictionary;  m  because  the  patentee  presumably 


Chute  Co.,  87  F.  R.  227,  1898; 
Carnegie  Steel  Co.  v.  Brislin,  124 
F.  R.  213,  1903;  Lowrie  v.  Mel- 
drum  Co.,  124  F.  R.  761,  1903; 
Brill  v.  North  Jersey  St.  Ry.  Co., 
124  F.  R.  778,  1903;  General 
Electric  Co.  v.  International  Spe- 
cialty Co.,  126  F.  R.  755,  1903; 
Superior  Hay  Stacker  Mfg.  Co.  v. 
Dain  Mfg.  Co.,  208  F.  R.  549, 
1913;  O.  H.  Jewell  Filter  Co. 
v.  Jackson,  140  F.  R.  340, 
1905. 

205  Campbell  Printing-Press  Co. 
v.  Marden,  64  F.  R.  786,  1894; 
Temple  Pump  Co.  v.  Mfg.  Co.,  30 
F.  R.  442,  1887;  Edison  Electric 
Light  Co.  v.  U.  S.  Electric  Light- 
ing Co.,  52  F.  R.  309, 1892;  Pacific 
Cable  Ry.  Co.  v.  Butte  City  Ry. 
Co.,  55  F.  R.  763, 1893. 

206  American  Dunlop  Tire  Co.  v. 
Erie  Rubber  Co.,  66  F.  R.  558, 
1895. 


207  Pitts  v.  Wemple,  1  Bissell,  87, 
1855. 

208  Smith  v.  Dental  Vulcanite 
Co.,  93  U.  S.  493,  1876;  Howe 
Machine  Co.  v.  National  Needle 
Co.,  134  U.  S.  395,  1890;  Pacific 
Cable  Railway  Co.  v.  Butte  City 
Ry.  Co.,  58  F.  R.  423, 1893;  Moss- 
berg  v.  Nutter,  135  F.  R.  95,  1905. 
Robins  Conveying  Belt  Co.  v. 
Am.  Road  Mach.  Co.,  145  F.  R. 
923,  1906;  1900  Washer  Co.  v. 
Cramer,  169  F.  R.  629,  1909; 
Fowler  &  Wolfe  Mfg.  Co.  v.  Na- 
tional Radiator  Co.,  172  F.  R.  661, 
1909;  Houser  v.  Starr,  203  F.  R. 
264,  1913;  Diamond  Patent  Co. 
v.  S.  E.  Carr  Co.,  217  F.  R.  400, 
1914;  O.  H.  Jewell  Filter  Co.  v. 
Jackson,  140  F.  R.  340,  1905. 

209  Standard  Paint  Co.  v.  Bird, 
65  F.  R.  510,  1894;  Blair  v. 
Jeannetter-McKee  Glass  Works, 
161  F.  R.  355,  1908. 


CHAP.    VII.] 


LETTERS    PATENT 


239 


knew  the  description,  and  may  not  have  known  the  dic- 
tionary; and  because  the  reader  of  a  patent  may  reason- 
ably be  expected  to  consult  the  description,  before  he 
consults  the  dictionary,  when  engaged  in  trying  to  learn 
the  meaning  of  one  of  its  claims.  The  claims  whenever 
possible  are  to  be  construed  so  as  to  cover  the  real  in- 
vention as  found  in  the  specification  and  drawings,  and 
this  is  particularly  so  in  the  case  of  a  meritorious  inven- 
tion.210 

The  phrase  "for  the  purpose  set  forth"  is  never  implied 
in  a  claim,  because  an  inventor  is  entitled  to  the  exclusive 
use  of  his  invention  for  all  purposes,  whether  he  sets  them 
all  forth  in  his  specification  or  not.211  And  such  a  phrase 
ought  never  to  be  expressed  in  a  claim,  because  it  cannot 
impart  validity  to  a  claim  otherwise  void,212  and  because  it 
may  enable  persons  to  avoid  infringement,  who  would 
otherwise  infringe.213 

The  phrase  "in  mechanism"  is  used  in  many  claims, 
with  a  purpose  to  limit  the  claim  in  which  it  is  used,  to 


210  See  Sections  185,  186. 
Mossberg  v.  Nutter,  135  F.  R. 
95,  1905;  Stirling  Co.  v.  Standard 
Snuff  Co.,  137  F.  R.  94,  1905; 
Columbia  Wire  Co.  v.  Kokomo 
Steel  &  Wire  Co.,  143  F.  R.  116, 
1905;  Maunula  v.  Sunell,  155 
F.  R.  535,  1907;  0.  H.  Jewel 
Filter  Co.  v.  Jackson,  140  F.  R. 
340,  1905;  Electric  Candy  Ma- 
chine Co.  v.  Morris,  156  F.  R.  972, 
1905;  Bossert  Electric  Construc- 
tion Co.  v.  Pratt  Chuck  Co.,  179 
F.  R.  385,  1910;  Malignani  v. 
Jasper  Marsh,  etc.,  Co.,  180  F.  R. 
442,  1910;  Kryptok  Co.  v.  Stead 
Lens  Co.,  207  F.   R.  85,   1913; 


Thacher  v.  Transit  Const.   Co., 
234  F.  R.  640,  1916. 

211  Roberts  v.  Ryer,  91  U.  S. 
157,  1875;  Muller  v.  Lodge  & 
Davis  Mach.  Tool  Co.,  77  F.  R. 
627, 1896;  National  Hollow  Brake 
Beam  Co.  v.  Interchangeable 
Brake-Beam  Co.,  106  F.  R.  709, 
1901;  Dowagiac  Mfg.  Co.  v.  Su- 
perior Drill  Co.,  115  F.  R.  886, 
1902. 

See  Sections  175  and  180. 

212  Crescent  Brewing  Co.  v. 
Gotfried,  127  U.  S.  168,  1888. 

213  Keystone  Bridge  Co.  v.  Iron 
Co.,  95  U.  S.  278,  1877. 


'240  LETTERS    PATENT  [('HAP.    VII. 

the  subject  of  that  claim  where  that  subject  is  employed 
as  a  part  of  a  particular  mechanism.  Such  a  limitation 
is  effective  to  exclude  later  employment  of  the  subject 
of  the  claim  in  other  mechanism,  and  thus  to  negative 
infringement;  but  such  a  limitation  is  not  effective  to 
exclude  earlier  employment  of  the  subject  of  the  claim 
in  other  mechanism,  and  thus  to  avert  negation  of  nov- 
elty.214 Novelty  depends  on  character,  and  not  on  en- 
vironment; but  infringement  is  made  to  depend  on 
environment  by  a  patentee  himself,  where  he  limits  his 
claim  to  the  employment  of  his  invention  as  part  of  a 
particular  mechanism. 

The  drawings  attached  to  letters  patent  may  be  re- 
ferred to  for  explanation  of  anything  which  the  description 
leaves  obscure,215  but  not  to  supply  a  total  omission  of 
description,216  or  to  contradict  any  plain  statement 
therein.217 

And  neither  drawings  nor  descriptions  can  enlarge 
claims.218  Claims  may  be  narrowed  by  limitations  in  the 
description,219  and  also  by  importation  by  construction 
of  described  elements  which  are  necessary  to  invention 

214  Frederick  R.  Stearns  &  Co.  Co.  v.  National  Needle  Co.,  134 
v.  Russell,  85  F.  R.  224,  1898.  U.  S.  394,  1890;  McClain  v.  Ort- 

215  Hogg  v.  Emerson,  11  How-  mayer,  141  U.  S.  419,  1891;  Cin- 
ard,  587,  1850.  cinnati  Ry.  Supply  Co.  v.  Am. 

21<>Gunn  v.  Savage,  30  F.  R.  Hoist,  etc.,  Co.,  143  F.  R.  322, 

369,    1887;   Wilkin  v.   Covel,   46  1905;     National     Enameling     & 

F.  R.  926,  1891;  Windle  v.  Parks,  Stamping  Co.   v.   New  England 

etc.,  Mach.  Co.,  134  F.  R.  381,  Enameling   Co.,    151   F.    R.    19, 

1904.  1906. 

217  Elgin  Butter  Tub  Co.  v.  219  Sargent  v.  Lock  Co.,  114 
Creamery  Package  Mfg.  Co.,  80  U.  S.  86,  1884;  Crawford  v.  Hey- 
F.  R,  294,  1897.  singer,  123  TJ.  S.  606,  1887;  Mc- 

218  Railroad  Co.  v.  Mellon,  104  Clain  v.  Ortmayer,  141  U.  S.  419, 
U.  S.  112,  1881;  White  v.  Dunbar,  1891. 

119  U.  S.  51, 1886;  Howe  Machine 


(HAP.    VII. ]  LETTERS    PATENT  24] 

or  novelty  as  well  as  operativeness;  22°  or  are  necessary 
to  operativeness  alone; 221  but  not  such  as  are  necessary 
only  to  invention  or  novelty.222 

§  182a.  Reference  letters  or  numerals,  when  used  in  a 
claim  to  indicate,  or  help  indicate,  a  part  or  combination 
covered  thereby,  do  not  limit  that  claim  to  the  specific 
mechanism  shown  in  the  patent ;  unless  the  claim  must  be 
thus  limited  by  the  prior  state  of  the  art.223  But  where 
the  novelty  of  a  part  or  combination,  shown  in  the  draw- 
ings of  a  patent,  resides  entirely  in  all  its  particular  char- 
acteristics, and  where  that  part  or  combination  is  specified 
in  a  claim  by  reference  letters  or  numerals,  that  claim  is 
limited  to  a  part  or  combination  having  those  particular 
characteristics;  for  if  not  thus  restricted,  the  claim  would 
be  void  for  want  of  novelty.224  But  the  same  rule  applies, 
in  an  otherwise  similar  case,  for  the  same  reason,  where 
the  part  or  combination,  covered  by  a  claim,  is  indicated 
therein  in  some  other  way  than  by  reference  letters  or 
numerals.    A  rule  which  would  give,  to  a  reference  letter 

220 Hartshorns  Barrel  Co.,  119  393,    1895;   Muller  v.   Lodge   & 

U.    S.    679,    1886;    Consolidated  Davis  Mach.  Tool  Co.,  77  F.  R. 

Roller-Mill   Co.   v.   Walker,    138  629,   1896;  Bonnette  Arc  Lawn 

U.  S.  132,  1891.  Sprinkler  Co.  v.  Koehler,  82  F.  R. 

221  Thomson-Houston    Electric  431,  1897;  Ross-Moyer  Mfg.  Co. 

Co.  v.  Union  Ry.  Co.,  86  F.  R.  v.  Randall,  104  F.  R.  359,  1900; 

637,    1898;   Canda   v.    Michigan  Electric  Candy  Machine  Co.   v. 

Malleable  Iron  Co.,   124  F.   R.  Morris,    156   F.    R.    972,    1905; 

486,  1903.  Brunswick-Balke-Collender  Co.  v. 

222McCarty  v.   Lehigh   Valley  Rosatto,    159  F.   R.   729,   1908; 

Railroad  Co.,  160  U.  S.  116,  1895;  Curry  v.  Union  Electric  Welding 

Metallic  Extraction  Co.  v.  Brown,  Co.,  230  F.  R.  422,  1916. 

110  F.  R.  665,  1901.  224Knapp  v.  Morss,  150  U.  S. 

223  Campbell  Printing-Press  Co.  228,  1893;  Lehigh  Valley  Railroad 

v.  Marden,  64  F.  R.  785,  1894;  Co.  v.  Kearney,  158  U.  S.  469, 

McCormick     Harvesting    Mach.  1895;  Schaum  v.  Riehl,  124  F.  R. 

Co.  v.  Aultman  &  Co.,  69  F.  R.  320,  1903. 


242  LETTERS    PATENT  [CHAP.    VII. 

or  numeral  in  a  claim,  a  more  narrowing  effect  than  is 
called  for  by  the  prior  state  of  the  art,  would  be  an  ar- 
tificial rule  of  interpretation;  but  the  object  of  the  patent 
law  is  to  secure  to  inventors  what  they  have  invented, 
and  that  object  is  not  to  be  defeated  by  the  application  of 
any  such  rule.225 

The  foregoing  principles,  however,  should  not  be  con- 
fused with  the  rule  that  every  part  specifically  referred  to 
by  a  letter  is  deemed  material  according  to  the  well 
known  doctrine,  and  where  for  instance  an  element  is 
described  as  a  "vessell  A,  A/  C,  C/"  the  vessel  must 
possess  the  characteristics  A,  A'  and  C,  C/  or  their  equiva- 
lents.226 

§  183.  Claims  which  are  functional  in  form;  that  is  to 
say,  claims  which  literally  purport  to  cover  a  result 
rather  than  a  process  or  a  thing,  are  properly  construed 
to  cover  only  the  process  or  the  thing  which  produces  that 
result,  for  otherwise  such  claims  would  be  void.227  And  a 
claim  which  literally  purports  to  cover  a  process  performed 
by  machinery,  is  properly  construed  to  cover  the  ma- 
chinery itself,  and  not  any  process  performed  thereby.228 
It  has,  however,  been  held  that  if  a  process  claim  be  com- 
bined with  a  claim  for  a  machine  the  process  must  be 

^Topliff  v.  ToplitT,  145  U.  S.  905,    1882;   Henderson  v.   Stove 

171,  1892.  Co.,  2  Bann.  &  Ard.  608,  1877; 

226  Empire  Cream  Separator  Palmer  v.  Catling  Gun  Co.,  8 
Co.  v.  Electric  Candy  Machine  F.  R.  513,  1881;  Columbus  Watch 
Co.,  166  F.  R.  764, 1909.  Co.  v.  Robbins,  64  F.  R.  395, 1894; 

227  Fuller  v.  Yentzer,  94  U.  S.  Continental  Automobile  Co.  v. 
288,  1876;  Westinghouse  v.  Boy-  A.  G.  Spalding  &  Bros.,  177  F.  R. 
den  Power  Brake  Co.,  170  U.  S.  693,  1910. 

557,    1898;   Parham  v.   Machine  228  Smith  &  Egge  Mfg.  Co.  v. 

Co.,  4  Fisher,  468,  1871;  Hitch-  Bridgeport  Chain  Co.,  46  F.  R. 

cock  v.  Tremaine,  4  Fisher,  508,  395,  1891. 
1871;  Goes  v.  Collins  Co.,  9  F.  R. 


CHAP.    VII. |  LETTERS    PATENT  243 

capable  of  being  carried  out  by  other  means  than  the 
machine  of  the  patent  and  such  means  must  be  known, 
otherwise  the  process  claim  will  be  regarded  as  a  claim  for 
the  function  of  the  machine  and  hence  invalid.229  Where 
a  claim  ascribes  a  function,  to  any  of  the  things  which  it 
specifies,  that  ascription  is  a  limitation  of  that  claim.230 
And  where  a  claim  defines  its  subject  by  reference  to  the 
character  which  results  from  making  it  by  a  particular 
process,  that  claim  is  limited  to  the  article  as  thus  pro- 
duced.231 

So  also  a  claim  for  an  article  of  manufacture,  which  des- 
ignates its  distinguishing  thing  by  naming  the  material 
of  which  it  is  made,  but  which  uses  a  generic  name  for 
that  purpose;  will  be  limited  by  construction,  to  the 
specific  material  specified  in  the  description.232 

§  184.  The  prior  state  of  the  art,  to  which  an  invention 
belongs,  must  be  considered  in  construing  any  claim  for 
that  invention,233  although  the  art  may  have  been  ad- 
vanced to  that  stage,  by  a  prior  invention  of  the  same  in- 
ventor.234    The  leading  cases  on  this  subject  are  McCor- 

229  Am.  Lava  Co.  v.  Steward,  Co.  v.  Tool  Co.,  20  Wallace,  342, 
155  F.  R.  731,  1907.  1873;  Florsheim  v.  Schilling,  137 

See  Section  180.  U.  S.  71,  1890;  The  Roller  Mill 

230  Masseth  v.  Larkin,  111  F.  R.  Patent,  156  U.  S.  269,  1895; 
409,  1901.  Dederick  v.  Seigmund,  51  F.  R. 

231  Expanded  Metal  Co.  v.  235,  1892;  Brush  Electric  Co.  v. 
Board  of  Education,  103  F.  R.  Electric  Imp.  Co.,  52  F.  R.  972, 
286,  1900.  1892;  Boston  Lasting  Mach.  Co. 

232  Consolidated  Electric  Light-  v.  Woodward,  53  F.  R.  481,  1893; 
ing  Co.  v.  McKeesport  Light  Co.,  Stirrat  v.  Excelsior  Mfg.  Co.,  61 
159  U.  S.  465,  1895;  American  F.  R.  981,  1894;  Simplex  Railway 
Sulphite  Pulp  Co.  v.  Howland  Appliance  Co.  v.  Wands,  115  F.  R. 
Falls  Pulp  Co.,  70  F.   R,   989,  521,  1902. 

1895.  234  Celluloid  Mfg.  Co.  v.  Cel- 

233  Carlton  v.  Bokee,  17  Wal-  lonite  Mfg.  Co.,  42  F.  R.  906, 
lace,  463,  1873;  Washing-Machine      1890. 


I'll  LETTERS    PATENT  |('I1AI'.    VII. 

mick  v.  Talcott,288  and  Railway  Co.  v.  Sayles,236  and  Morley 
Machine  Co.  v.  Lancaster,-'17  and  Kokomo  Fence  Machine 
Co.  v.  Kitselman.238 

The  doctrine  of  the  McCormick  case  is  as  follows: 
The  original  inventor  of  a  machine  will  have  a  right 
to  treat  as  infringers  all  who  make  machines  operat- 
ing on  the  same  principle,  and  performing  the  same 
functions,  by  analogous  means,  or  equivalent  combina- 
tions; even  though  the  infringing  machine  be  an  im- 
provement on  the  original,  and  patentable  as  such.  But 
if  the  invention  claimed,  be  itself  but  an  improvement  on 
a  known  machine,  by  a  mere  change  of  form  or  combina- 
tion of  parts,  the  patentee  cannot  treat  another  as  an 
infringer,  who  has  improved  the  original  machine,  by  use 
of  a  different  form  or  combination,  performing  the  same 
functions.  The  inventor  of  the  first  improvement  cannot 
invoke  the  doctrine  of  equivalents  to  suppress  any  other 
improvement  which  is  not  a  mere  colorable  invasion  of  the 
first. 

The  doctrine  of  the  Sayles  case  is  as  follows:  If  one 
inventor,  in  a  particular  art,  precedes  all  the  rest,  and 
strikes  out  something  which  underlies  all  that  they  pro- 
duce, he  subjects  them  to  tribute.  But  if  the  advance 
toward  the  thing  desired  is  gradual,  so  that  no  one  can 
claim  the  complete  whole,  then  each  inventor  is  entitled 
to  the  specific  form  of  device  which  he  produced,  and  every 
other  inventor  is  entitled  to  his  own  specific  form,  so 
long  as  it  differs  from  those  of  his  competitors  and  does 
not  include  theirs. 

The  doctrine  of  the  Morley  case  is  as  follows:  Where 

235  McCormick  v.  Talcott,  20  237  Morley  Machine  Co.  v.  Lan- 
Howard,  402,  1857.  caster,  129  U.  S.  273,  1889. 

236  Railway  Co.  v.  Sayles,  97  238  Kokomo  Fence  Machine  Co. 
U.  S.  554,  1878.  v.  Kitselman,  189  U.  S.  8, 1903. 


CHAP.    VII.]  LETTERS    TATENT  245 

an  invention  is  primary,  any  subsequent  improvement 
which  employs  substantially  the  same  means,  to  accom- 
plish the  same  result,  is  within  the  scope  of  a  proper  patent 
on  the  primary  invention,  although  the  subsequent  con- 
trivance may  contain  valuable  improvements;  but  second- 
ary patents  must  be  more  narrowly  construed  than  pri- 
mary patents. 

The  doctrine  of  the  Kokomo  case  is  as  follows :  A  patent 
which  is  the  first  to  give  to  the  world,  an  invention  for 
doing  a  particular  part  of  the  world's  work,  is  a  primary 
patent,  and  is  entitled  to  have  a  broad  construction ;  but  a 
patent  which  is  not  thus  primary,  is  limited  to  the  identi- 
cal means,  and  mode  of  operation  which  it  describes. 

The  meaning  of  these  four  cases  seems  to  be  that  every 
inventor  is  entitled  to  claim  whatever  he  was  the  first  to 
invent.  If  A.  B.  is  the  first  to  invent  mechanism  to  per- 
form a  particular  work,  and  if  his  mechanism  is  substanti- 
ally incorporated  into  subsequent  machines  which  do  that 
work,  then  A.  B.  is  entitled  to  such  a  construction  of  his 
patent  as  will  be  infringed  by  those  later  machines;  but 
if  C.  D.  is  a  mere  improver  on  A.  B.'s  machine,  C.  D.  is  not 
entitled  to  such  a  construction  of  his  patent,  as  will  cover 
the  machines  of  still  later  inventors,  who  have  improved 
on  A.  B.'s  machine  in  a  substantially  different  manner. 
It  follows  from  these  doctrines  that  C.  D.'s  patent  must 
be  construed  in  the  light  of  A.  B.'s  machine,  and  indeed 
of  every  other  similar  and  older  structure;  which  is  the 
same  thing  as  saying  that  every  patent  must  be  construed 
in  the  light  of  the  state  of  the  art,  at  the  time  the  invention 
it  covers  was  produced. 

The  state  of  a  particular  art,  at  the  time  of  a  particular 
invention,  includes  whatever  inventions,  belonging  to  that 
art,  had  been  already  invented  and  used  in  the  United 
States,  or  patented,  or  described  in  any  printed  publica- 


246  LETTERS   PATENT  [CHAP.    VII. 

tion,  in  any  country.289  And  an  invention  is  patented  in 
the  eye  of  this  law,  where  it  is  fully  shown  in  the  drawings 
of  a  patent,  though  not  described  in  the  specification.210 
Patents  take  rank  in  an  art  in  the  order  of  their  num- 
bers;241 except  where  that  order  is  different  from  the 
order  of  the  dates  upon  which  they  were  applied 
for,  in  which  case  they  take  rank  in  the  order  of  those 
dates.242 

§  184a.  The  prior  state  of  other  arts,  may  also  be  con- 
sidered in  construing  a  claim;  because  that  construction 
may  depend  on  the  area  of  the  territory  which  was  open 
to  the  claimant  to  cover;  and  because  that  territory  may 
have  been  reduced  by  inventions  in  other  arts,  as  well  as  in 
the  art  to  which  the  claimed  invention  belongs.243  But 
an  invention  which  was  not  designed  by  its  maker,  nor 
actually  used,  nor  apparently  adapted  to  perform  the 
function  of  the  claimed  invention,  but  which  was  used  in  a 
remote  art,  under  radically  different  conditions,  to  per- 

239  Section  43  of  this  book.  347,    1894;    Steiner   Fire   Extin- 

240  Wright  v.  Yuengling,  155  guisher  Co.  v.  Adrian,  52  F.  R. 
U.  S.  53,  1894.  731,  1891,  and  59  F.  R.  133, 1893; 

241  Underwood  v.  Gerber,  149  Forgie  v.  Oil  Well  Supply  Co.,  57 
U.  S.  224,  1893;  Writing  Mach.  F.  R.  747,  1893;  Schreiber  &  Sons 
Co.  v.  Elliott  &  Hatch  Co.,  106  v.  Grim,  65  F.  R.  221,  1895,  and 
F.  R.  508,  1900.  72  F.  R.  671,  1896;  Frederick  R. 

242  Barbed  Wire  Patent,  143  Stearns  &  Co.  v.  Russell,  85  F.  R. 
U.  S.  281,  1892.  226,  1898;  Solvay  Process  Co.  v. 

243  Crescent  Brewing  Co.  v.  Michigan  Alkali  Co.,  90  F.  R.  818, 
Gottfried,  128  U.  S.  169,  1888;  1898;  Thomson-Houston  Electric 
Peters  v.  Active  Mfg.  Co.,  129  Co.  v.  Rahway  Electric  Co.,  95 
U.  S.  537,  1889;  Peters  v.  Hanson,  F.  R.  660,  1899;  Indiana  Novelty 
129  U.  S.  541,  1889;  Aron  v.  Man-  Mfg.  Co.  v.  Crocker  Chair  Co., 
hattan  Railway  Co.,  132  XL  S.  103  F.  R.  496,  1900;  Farrell  v. 
85,  1889;  St.  Germain  v.  Bruns-  Boston,  etc.,  Silver  Mining  Co., 
wick,  135  U.  S.  231,  1890;  Gates  121  F.  R.  847,  1903. 

Iron  Works  v.  Fraser,  153  U.  S. 


CHAP.    VII.]  LETTERS   PATENT  247 

form  another  function,  does  not  limit  the  scope  of  the  in- 
vention as  claimed.-" 

§  185.  "  While  it  is  undoubtedly  true  that  a  patentee 
may  so  restrict  his  claim  as  to  cover  less  than  what  he  in- 
vented, or  may  limit  it  to  one  particular  form  of  a  ma- 
chine, excluding  all  other  forms,  though  they  also  embody 
his  invention,  yet  such  an  interpretation  should  not  be 
put  upon  his  claim  if  it  can  fairly  be  construed  other- 
wise."245 "Patents  for  inventions  are  to  receive  a  liberal 
construction,  and  under  the  fair  application  of  the  rule, 
ut  res  magis  valeat  quam  pereat,  are,  if  practicable,  to  be  so 
interpreted  as  to  uphold  and  not  to  destroy  the  right  of  the 
inventor."246  "A  patent  should  be  construed  in  a  liberal 
spirit  to  sustain  the  just  claims  of  the  inventor.  This 
principle  is  not  to  be  carried  so  far  as  to  exclude  what  is 
in  it,  or  to  interpolate  anything  which  it  does  not  contain. 
But  liberality,  rather  than  strictness,  should  prevail  where 
the  fate  of  the  patent  is  involved,  and  the  question  to  be 
decided  is  whether  the  inventor  shall  hold  or  lose  the  fruits 
of  his  genius,  and  his  labors."247  "The  court  should 
proceed  in  a  liberal  spirit,  so  as  to  sustain  the  patent  and 
the  construction  claimed  by  the  patentee  himself,  if  this 
can  be  done  consistently  with  the  language  which  he  has 
employed."248  "In  a  case  of  doubt,  where  the  claim  is 
fairly  susceptible  of  two  constructions,  that  one  will  be 
adopted,  which  will  preserve  to  the  patentee  his  actual  in- 
vention."249    "The  object  of  the  patent  law  is  to  secure 

244  National     Hollow     Brake-  249Turrill  v.   Railroad   Co.,    1 
Beam    Co.    v.     Interchangeable  Wallace,  491,  1863. 
Brake-Beam  Co.,  106  F.  R.  702,  247  Rubber  Co.  v.  Goodyear,  9 
1901;    Electric    Candy    Machine  Wallace,  788,  1869. 

Co.  v.  Morris,   156    F.   R.  972,  248  Klein  v.  Russell,  19  Wallace, 

1905.  433,  1873. 

245  Winans  v.  Denmead,  15  249  McClain  v.  Ortmayer,  141 
Howard,  330,  1853.  U.  S.  425,  1891. 


248  LETTERS    PATENT  [CHAP.    VII. 

to  inventors,  a  monopoly  of  what  they  have  actually  in- 
vented or  discovered,  and  it  ought  not  to  be  defeated  by  a 
too  strict  and  technical  adherence  to  the  letter  of  the 
statute,  or  by  the  application  of  artificial  rules  of  inter- 
pretation."250 

These  are  the  declarations  of  the  Supreme  Court  rele- 
vant to  the  proper  liberality  to  be  observed  in  construing 
patents.  That  liberality  as  often  shows  itself  in  a  narrow 
construction  as  in  a  broad  one;  for  narrow  construction 
may  be  as  necessary  to  establish  the  validity  of  a  patent, 
as  a  broad  construction  is  to  lay  the  foundation  for  proof 
of  its  infringement.251  Therefore  when  it  becomes  neces- 
sary to  construe  a  claim  narrowly,  in  order  that  its  nov- 
elty may  not  be  negatived  by  the  prior  art,  or  its  validity 
otherwise  overthrown,  courts  will  give  such  a  narrow 
construction,  if  they  can  do  so  consistently  with  the  lan- 
guage of  the  claim  and  of  the  description.252  On  the 
other  hand,  a  claim  will  not  be  narrowed  by  importing 
into  it,  by  construction,  any  dispensable  element,  in  order 
to  enable  an  infringer  to  escape  the  consequences  of  his 
infringement.253 

§  185a.  It  has  been  held  in  several  circuits  that  when 
no  practical  use  has  been  made  of  the  patent  the  claims 
will  be  narrowly  construed,  the  reason  for  so  holding 

250  Topliff  v.  Topliff,  145  U.  S.  liams,  50  F.  R.  931,  1892;  Van 
171,  1892.  Ness  v.  Layne,  213  F.  R.  804, 

251  McEwan  Bros.  Co.  v.  Mc-  1914;  Fowler  &  Wolfe  Mfg.  Co. 
Ewan,  91  F.  R.  790,  1899.  v.  M'Crum-Howell  Co.,  215  F.  R. 

252  Klein  v.  Russell,  19  Wallace,  905,  1914. 

433,   1873;  Jones  v.   Barker,   11  263  Lamson  Cash   Reg.   Co.   v. 

F.  R.  600,  1882;  Stevenson  v.  Ma-  Keplinger,  45  F.  R.  249,   1890 

gowan,  31  F.  R.  826,  1887;  Con-  But  see  Crown  Cork  &  Seal  Co. 

solidated      Roller-Mill     Co.      v.  v.  Sterling  Cork  &  Seal  Co.,  217 

Coombs,  39  F.  R.  30, 1889;  Steam  F.  R.  381,  1914. 
Gauge  and  Lantern  Co.  v.  Wil- 


CHAP.    VII.]  LETTERS    PATENT  249 

being  that  in  such  a  case  the  patent  lacks  the  support 
that  comes  from  public  acquiescence.254  And  as  a  cor- 
ollary to  this  proposition  it  is  held  that  where  the  in- 
vention is  a  practical  success  and  constitutes  a  distinct 
advance  in  the  art  the  claims  are  entitled  to  a  liberal  con- 
struction.255 

Nor  will  claims  be  narrowed  where  the  proceedings  in 
the  Patent  Office  clearly  show  that  the  inventor  intended 
to  claim  and  the  Patent  Office  intended  to  grant  the 
broader  monopoly.256 

In  view  of  the  principles  of  the  doctrine  of  equivalents 
as  laid  down  in  the  cases  cited  in  Section  359  of  this  book 
it  is  not  clear  what  the  Supreme  Court  meant  when  it  said 
in  Continental  Paper  Bag  Co.  v.  Eastern  Paper  Bag  Co  :257 

"The  invention,  of  course,  must  be  described  and  the 
mode  of  putting  it  to  practical  use,  but  the  claims  measure 
the  invention.  They  may  be  explained  and  illustrated 
by  the  description.  They  cannot  be  enlarged  by  it. 
Yale  Lock  Co.  v.  Green-Leaf,  117  U.  S.  554.  Snow  v. 
Lake  Shore  &c.  Railway  Co.,  121  U.  S.  617,  is  a  case  where 
a  claim  was  limited  by  a  description  of  the  device,  with 
reference  to  drawings.  The  court,  in  rejecting  the  con- 
tention that  the  description  of  the  particular  device  was 
to  be  taken  as  a  mere  recommendation  of  the  patentee  of 

254  Boston  Woven  Hose  &  Rub-  255  Hall  Signal  Co.  v.  General 

her  Co.  v.  Pennsylvania  Rubber  Ry.  Signal  Co.,  169  F.  R.  290, 

Co.,  164  F.R.  557, 1908;  National  1909;  Goodwin  Film  &  Camera 

Malleable  Castings  Co.  v.  Buck-  Co.  v.  Eastman  Kodak  Co.,  213 

eye  Malleable  Iron  &  Coupler  Co.,  F.  R.  231,  1914. 

171 F.  R.  847, 1909;  Westinghouse  256  Wm.  B.  Scaife  &  Sons  Co.  v. 

Electric  &  Mfg.   Co.   v.  Toledo  Falls  City  Woolen  Mills,  209  F.  R. 

P.  C.  &  L.  Ry.  Co.,  172  F.  R.  210,  1913. 

371,  1909;  F.  Wesel  Mfg.  Co.  v.  257  Continental  Paper  Bag  Co. 

Printing    Machinery     Co.,     218  v.   Eastern  Paper  Bag  Co.,  210 

F.  R.  178,  1914.  U.  S.  405,  1908. 


250  LETTERS    PATENT  [CHAP.    VII. 

the  manner  in  which  he  contemplated  to  arrange  the  parts 
of  his  machine,  said  there  was  nothing  in  the  context  to 
indicate  that  the  patentee  contemplated  any  alternative 
for  the  arrangement  of  the  parts  of  the  device.  Therein 
the  description  is  distinguished  from  the  description  in  the 
Liddell  patent.  Liddell  was  explicit  in  the  declaration 
that  there  might  be  alternatives  for  the  device  described 
and  illustrated  by  him.  He  was  explicit  in  saying  that 
in  place  of  the  device  for  controlling  the  movement  of  the 
forming  plate  relatively  to  the  cylinder  that  the  plate 
might  abe  moved  or  operated  by  any  other  suitable 
means." 

While  it  is  true  that  by  statutory  provision  258  an  in- 
ventor, in  the  case  of  a  machine  patent,  "  shall  explain 
.  .  .  the  best  mode  in  which  he  has  contemplated  apply- 
ing that  principle,"  it  is  not  clear  how  this  requirement 
has  any  bearing  on  the  scope  of  his  claims.  The  court 
has  apparently  given  a  broader  construction  to  a  patent  in 
which  the  inventor  has  stated  as  a  conclusion  that  there 
might  be  alternatives  for  the  device  described  and  shown 
by  him,  than  it  would  have  done  had  that  statement  been 
absent. 

§  186.  "The  developed  and  improved  condition  of  the 
patent  law,  leaves  no  excuse  for  ambiguous  language  or 
vague  descriptions.  The  public  should  not  be  deprived 
of  rights  supposed  to  belong  to  it,  without  being  clearly 
told  what  it  is  that  limits  those  rights.  The  genius  of  the 
inventor  should  not  be  restrained  by  vague  and  indefinite 
descriptions  of  claims  in  existing  patents,  from  the  right  of 
improving  on  that  which  has  already  been  invented.  It 
seems  to  us  that  nothing  can  be  more  just  and  fair,  both 
to  the  patentee  and  to  the  public,  than  that  the  former 
should  understand,  and  correctly  describe,  just  what  he 
25S  Revised  Statutes,  Section  4888. 


CHAP.    VII.]  LETTERS   PATENT  25] 

has  invented,  and  for  what  he  claims  a  patent."259  "As 
patents  are  procured  ex  parte,  the  public  is  not  bound  by 
them,  but  the  patentees  are.  And  the  latter  cannot 
show  that  their  invention  is  broader  than  the  terms  of 
their  claim;  or,  if  broader,  they  must  be  held  to  have  sur- 
rendered the  surplus  to  the  public."260  "It  is  well  known 
that  the  terms  of  the  claim  in  letters  patent  are  care- 
fully scrutinized  in  the  Patent  Office.  Over  this  part  of 
the  specification  the  chief  contest  generally  arises.  It 
defines  what  the  Office,  after  a  full  examination  of  previous 
inventions  and  the  state  of  the  art,  determines  the  applicant 
is  entitled  to.  The  courts,  therefore,  should  be  careful 
not  to  enlarge,  by  construction,  the  claim  which  the  Pat- 
ent Office  has  admitted,  and  which  the  patentee  has 
acquiesced  in,  beyond  the  fair  interpretation  of  its 
terms."261 

"In  view  of  the  statute,  the  practice  of  the  Patent 
Office,  and  the  decisions  of  this  Court,  we  think  that  the 
scope  of  letters  patent  should  be  limited  to  the  invention 
covered  by  the  claim,  and  that  though  the  claim  may  be 
illustrated,  it  cannot  be  enlarged  by  the  language  used  in 
other  parts  of  the  specification."  262  "Some  persons  seem 
to  suppose  that  a  claim  in  a  patent  is  like  a  nose  of  wax 
which  may  be  turned  and  twisted  in  any  direction,  by 
merely  referring  to  the  specification,  so  as  to  make  it  in- 
clude something  more  than,  or  something  different  from 
what  its  words  express.  The  claim  is  a  statutory  require- 
ment, prescribed  for  the  very  purpose  of  making  the  pat- 
entee define  precisely  what  his  invention  is;  and  it  is 

259  Merrill  v.  Yeomans,  94  U.  S.  M1  Burns  v.  Myer,  100  U.  S. 
573,  1876.  672,  1879. 

260  Keystone  Bridge  Co.  v.  Iron  262  Railroad  Co.  v.  Mellon,  104 
Co.,  95  U.  S.  278,  1877.  U.  S.  118,  1881. 

See  Section  176. 


252  LETTERS    PATENT  [CHAP.    VII. 

unjust  to  the  public,  as  well  as  an  evasion  of  the  law,  to 
construe  it  in  a  manner  different  from  the  plain  import 
of  its  terms."  263  "Since  the  inventor  must  particularly 
specify  and  point  out  the  part,  improvement  or  combina- 
tion which  he  claims  as  his  own  invention  or  discovery ; 
the  specification  and  drawings  are  usually  looked  at  only 
for  the  purpose  of  better  understanding  the  meaning  of  the 
claim,  and  certainly  not  for  the  purpose  of  changing  it 
and  making  it  different  from  what  it  is."  264  "We  know 
of  no  principle  of  law  which  would  authorize  us  to  read 
into  a  claim,  an  element  which  is  not  present,  for  the  pur- 
pose of  making  out  a  case  of  novelty  or  infringement."  2nr> 
These  are  the  declarations  of  the  Supreme  Court  relevant 
to  the  proper  strictness  to  be  observed  in  construing  pat- 
ents; and  they  apply  to  primary  patents  as  much  as  to 
secondary  patents.266  Therefore,  when  a  claim  clearly 
covers  a  combination  of  certain  elements,  it  cannot,  by 
construction,  be  so  altered  as  to  cover  more  elements,  so 
as  not  to  be  invalid,267  or  to  cover  fewer  elements,  and  thus 
be  rendered  more  likely  to  be  infringed,268  or  to  cover  other 
elements  in  place  of  some  that  may  be  omitted,  but  which 
are  not  equivalents  therefor.269  So,  also,  a  claim  for  a 
process,  substantially  as  described,  cannot  be  construed 

2«3  White  v.  Dunbar,  119  U.  S.  Stiles  v.  Rice,  29  F.  R.  445,  1887; 

51,  1886.  Wollensak  v.  Sargent,  41  F.  R.  55, 

264  Howe  Machine  Co.  v.  Na-  1890;    Westinghouse    v.    Edison 

tional  Needle  Co.,  134  U.  S.  394,  Electric  Light  Co.,  63  F.  R.  592, 

1890.  1894 ;  Anderson  Foundry  &  Mach. 

M5McCarty   v.   Lehigh  Valley  Works  v.  Potts,  108  F.  R.  384, 

Railroad  Co.,  160  U.  S.  116,  1895.  1901. 

266  Groth  v.  Postal  Supply  Co.,  268  Shepard    v.    Carrigan,    116 

61  F.  R.  287,  1894.  U.  S.  597,  1885;  Sutter  v.  Robin- 

287  McCarty   v.   Lehigh   Valley  son,  119  U.  S.  541,  1886;  McClain 

Railroad  Co.,  160  U.  S.  116, 1895;  v.  Ortmayer,  141  U.  S.  425,  1891. 

Morgan  Envelope  Co.'  v.  Albany  269Sackett  v.  Smith,  42  F.  R. 

Paper  Co.,  152  U.  S.  429,  1894;  852,  1890. 


CHAP.    VII.]  LETTERS    PATENT  253 

to  cover  an  incidental  process  set  forth  in  the  description, 
but  merely  recommended  there,  instead  of  being  required, 
or  being  stated  to  be  essential  to  the  principal  process  of 
the  patent.270  Likewise  a  patentee  of  a  manufacture  is  not 
restricted  to  a  construction  which  he  describes  in  the 
specification  merely  as  " preferable,"  unless  specifically 
limited  by  the  claims.271  And  so  in  the  case  of  a  patent 
for  a  process  where  the  use  of  a  specified  chemical  agent 
is  described  as  "  preferable"  to  a  method  which  the  defend- 
ant uses.272  In  fact  as  the  Supreme  Court  has  said: 
"An  inventor  must  describe  what  he  conceives  to  be  the 
best  mode,  but  he  is  not  confined  to  that.  If  this  were  not 
so  most  patents  would  be  of  little  worth."  273  And  so  in 
case  of  a  patent  for  a  machine.274  Nor  can  a  claim  for  a 
dye  stuff  as  produced  from  any  one  of  many  substances, 
be  construed  to  be  confined  to  that  dye  stuff  as  produced 
from  only  one  of  those  substances,  where  it  is  proved  that 
none  of  the  others  will  produce  it.275 

§  186a.  The  acts  and  conduct  of  the  owner  of  a  patent 
may  also  give  a  construction  to  a  claim  which  will  avoid 
infringement.  For  instance,  where  the  patentee  had  for 
a  number  of  years  placed  a  certain  construction  on  a 
claim,  with  knowledge  that  the  defendant  during  that 
time  had  been  selling  a  device  for  a  similar  purpose  to  that 
of  the  complainant,  but  which  did  not  infringe  the  claim 
as  so  construed,  complainant  was  held  to  be  stopped  from 

»  Sewell  r.  Jones,  91  U.  S.  185,  Mfg.     Co.,     166     F.     R.     443, 

1875;  Holliday  v.  Pickhardt,  29  1908. 

F.  R.  858,  1887.  273  Continental  Paper  Bag  Co. 

271  Smeeth  v.  Perkins  &  Co.,  125  v.  Eastern  Paper  Bag  Co.,  210 

F.  R.  285, 1903;  Rollman  Mfg.  Co.  U.  S.  405,  1908. 

v.  Universal  Hardware  Co.,  207  274  Steiger  v.  Waite  Grass  Car- 

F.  R.  97,  1913.  pet  Co.,  194  F.  R.  878,  1912. 

272Fullerton    Walnut    Growers  275  Matheson  v.   Campbell,   78 

Ass'n    v.    Anderson    Barngrover  F.  R.  910,  1897. 


*_!.yi  LETTERS    PATENT  [CHAP.    VII. 

claiming  infringement.276  This  holding  may  perhaps  more 
properly  be  placed  on  the  ground  of  laches.  The  doctrine 
applies  also  to  the  case  of  an  assignor  of  a  patent  who  is 
sued  for  infringement  by  the  assignee.277 

§  187.  Letters  patent  may  be  construed  in  the  light  of 
the  contemporaneous  intention  of  the  inventor  and  of  the 
Patent  Office;  and  to  this  end  recourse  may  be  had  to  the 
files  of  the  application  papers  to  see  what  changes  were 
made  in  the  description  and  claims  while  the  application 
was  pending  in  the  Patent  Office.278  Where  the  change 
made  in  the  Patent  Office  was  a  broadening  one,  it  cannot 
be  construed  away  in  order  to  ascribe  validity  to  the  pat- 
ent.279 But  no  subsequent  application  by  the  same  in- 
ventor for  another  patent  is  admissible  in  this  behalf;  28° 
except  where  the  patent  contains  a  disclaimer  of  matter 
said  therein  to  be  claimed  in  another  patent  or  application 
of  the  same  inventor,  in  which  case  that  other  patent  or 
application  is  admissible  to  aid  in  ascertaining  the  scope 
of  the  disclaimer.281 

§  187a.  Where  an  applicant,  on  the  rejection  of  his 
application,   inserted  in  consequence  of  that  rejection, 

276  Westinghouse  Elec.  &  Mfg.  Locomotive  Works,  174  F.  R.  224, 
Co.  v.   Wagner   Co.,   129  F.  R.      1909. 

604,     1904;    McGill    v.    White-  279  Morgan  Envelope  Co.  v.  Al- 

head  &  Hoag  Co.,  137  F.  R.  97,  bany  Paper  Co.,  152  U.  S.  429, 

1905.  1894;  Johnson  v.  Olsen,  61  F.  R. 

277  Hurwood  Mfg.  Co.  v.  Wood,  833,  1894. 

138  F.  R.  835,  1905.  280  Edison  Electric  Light  Co.  r. 

278  Crawford  v.  Heysinger,  123  U.  S.  Electric  Lighting  Co.,  47 
U.  S.  602,  1887;  Trader  v.  Mess-  "  F.  R.  462,  1891. 

more,  1  Bann.  &  Ard.  639,  1875;         But    see    Lewis    Blind-Stitch 

Bate  Refrigerating  Co.  v.  East-  Mach.    Co.    v.    Arbetter   Felling 

man,  24  F.  R.  649,  1885;  Williams  Mach.  Co.,  208  F.  R.  992,  1913. 
v.  Rubber  Shoe  Co.,  49  F.  R.  251,          281  National    Typographic    Co. 

1892;    Western    Engineering    &  v.  New  York  Typograph  Co.,  46 

Const.    Co.    v.    Risdon    Iron    &  F.  R.  115,  1891. 


CHAP.    VII.]  LETTERS    PATENT  255 

limitations  and  restrictions  into  his  specification,  for  the 
purpose  of  obtaining  his  patent,  he  cannot,  after  he  has 
obtained  it,  claim  that  it  shall  be  construed  as  it  would 
have  been  if  such  limitations  and  restrictions  were  not 
contained  in  it,282  and  this  is  particularly  so  where  the 
broad  construction  claimed  would  have  put  the  applica- 
tion in  interference  with  another  pending  application.283 
And  where  an  applicant  materially  modified  a  claim,  in 
obedience  to  a  requirement  of  the  Patent  Office,  it  will  not 
be  construed  as  it  would  have  been  if  it  had  not  been 
modified,284  even  where  the  modification  was  made  under 
protest,  accompanied  by  notice  that  the  applicant  would 
insist  that  the  modification  should  be  construed  away, 
after  the  granting  of  the  patent.285 

But  the  applicant  is  not  precluded  from  securing  by  an 
amended  claim  every  improvement  and  combination  that 
he  has  invented  and  that  is  not  disclosed  by  the  referen- 

282  Roemer  v.  Peddie,  132  U.  S.  283  Ajax  Forge  Co.  v.  Morden 

317,    1889;    Hubbell    v.    United  Frog,  etc.,  Works,  156  F.  R.  594, 

States,  179  U.  S.  80,  1900;  Greene  1907. 

v.  Buckley,  135  F.  R.  520,  1904;  2s<  Phoenix  Caster  Co.  v.  Spiegel, 
St.  Louis  Street,  etc.,  Co.  v.  Am.  133  U.  S.  368,  1890;  Williams  v. 
Street,  etc.,  Co.,  156  F.  R.  574,  Rubber  Shoe  Co.,  49  F.  R.  251, 
1907;  Johnson  Furnace  &  Eng.  1892;  Motion  Picture  Patents  Co. 
Co.  v.  Western  Furnace  Co.,  178  v.  Independent  Moving  Pictures 
F.  R.  819,  1910;  Campbell  v.  Co.,  200  F.  R.411, 1912;  Grever  w. 
American  Shipbuilding  Co.,  179  United  States  Hoffman  Co.,  202 
F.  R.  498,  1910;  Cotto-Waxo  F.  R.  923,  1913. 
Chemical  Co.  v.  Perolin  Co.  of  285  Thomas  v.  Rocker  Spring 
America,  185  F.  R.  267,  1911;  Co.,  77  F.  R.  431,  1896;  Victor 
W.  W.  Sly  Mfg.  Co.  v.  Russell  &  Talking  Mach.  Co.  v.  Am.  Graph- 
Co.,  189  F.  R.  61,  1911;  O'Brien-  ophone  Co.,  151  F.  R.  601,  1907; 
Worthen  Co.  v.  Stempel,  209  F.  R.  Gray  Telephone  Pay  Station  Co. 
847,  1913;  Ventilated  Cushion  &  v.  Baird  Mfg.  Co.,  174  F.  R.  417, 
Spring  Co.  v.  D'Arcy  (citing  1909;  Sharp  &  Smith  v.  Physicians 
authorities  in  the  Sixth  Circuit),  &  Surgeons  Appliance  Co.,  174 
232  F.  R.  468,  1916.  F.  R.  424,  1909. 


25< i  LETTERS    PATENT  [CHAP.   VII. 

ces  on  which  the  original  claim  was  rejected.280  And  it 
has  been  held  that  where  his  claims  as  restricted  by  amend- 
ment have  been  rejected  by  the  Examiner  but  finally 
allowed  on  appeal  on  the  broad  ground  that  the  basic 
idea  involved  invention,  the  amendments  do  not  restrict 
the  claim  to  the  precise  construction  therein  described.287 
It  may  be  remarked  that  of  late  years  courts  generally 
have  been  disposed  to  give  much  consideration  to  the 
fact  that  an  applicant  for  practical  reasons  of  expediency 
is  often  compelled  to  unduly  narrow  his  claims  while  the 
application  is  pending,  and  in  such  cases  lean  as  far  as 
possible  in  the  direction  of  liberality  where  the  limitations 
imposed  by  the  Patent  Office  appear  to  have  been  un- 
warranted. It  may  be  noted  that  the  Court  of  Appeals  of 
the  second  circuit  gives  effect  to  limitations  imposed  by 
the  Patent  Office  only  in  so  far  as  an  estoppel  has  been 
created.288 

Neither  can  a  patentee,  who  canceled  a  claim  in  his  ap- 
plication, after  it  was  rejected  by  the  Patent  Office  for 
want  of  invention  or  for  want  of  novelty,  afterward  suc- 
cessfully contend  that  some  other  claim  of  his  patent  shall 
be  construed  to  be  co-extensive  with  the  one  rejected,289 

288  Wayne  Mfg.  Co.  v.  Benbow-  194  F.  R.  427,  1911.    See  notes 

Brammer  Mfg.   Co.,   168  F.   R.  286  and  287  above. 
271,  1909;  Vrooman  a.  Penhallow,  289  Royer  v.  Coupe,  146  U.  S. 

179  F.   R.   296,   1910;   Drum  v.  532,  1892;  Corbin  Cabinet  Lock 

Turner,  219  F.  R.  188,  1914;  New  Co.  v.  Eagle  Lock  Co.,  150  U.  S. 

York  Scaffolding  Co.  v.  Whitney,  40,  1893;  Douglas  v.  Abraham,  50 

224    F.    R.    452,    1915;    Weber  F.  R.  422,  1892;  J.  L.  Mott  Iron 

Electric  Co.  v.  Union  Electric  Co.,  Works  v.  Standard  Mfg.  Co.,  53 

226  F.  R.  482,  1915.  F.  R.  821,  1893;  Kelly  v.  Clow,  89 

287  Gray  Telephone  Pay  Station  F.  R.  306,  1898;  Cotto-Waxo 
Co.  v.  Baird  Mfg.  Co.,  174  F.  R.  Chemical  Co.  v.  Perolin  Co.  of 
417,  1909.  America,   185  F.   R.  267,   1911; 

288  Westinghouse  Electric,  etc.,  Besser  v.  Merillat  Culvert  Core 
Co.  v.  Condit  Electrical  Mfg.  Co.,  Co.,  226  F.  R.  783,  1915;  Com- 


CHAP.  VII. J  LETTERS  PATENT  257 

even  though  the  cancellation  was  the  result  of  an  adverse 
decision  on  an  interference  proceeding.290  But  the  doc- 
trine of  limitation  by  amendment  applies  only  to  material 
modifications  which  alter  the  mode  of  operation,  and  so  if 
the  mode  of  operation  is  not  affected  the  limitation  can 
properly  be  disregarded.291  Nor  can  a  disclaimer,  which 
was  inserted  by  an  applicant  in  his  application  in  pursu- 
ance of  a  requirement  of  the  Patent  Office,  be  eliminated 
from  his  patent  by  construction.292  And  where  an  ap- 
plicant canceled  a  portion  of  his  application,  in  pursuance 
of  a  decision  in  the  Patent  Office  that  it  could  not  be 
covered  in  any  application  with  the  other  portions  thereof, 
a  patent  granted  upon  the  application  thus  reduced, 
cannot  be  construed  to  be  co-extensive  with  what  it  would 
have  been  but  for  such  cancellation.293  So  also,  where  an 
applicant  filed  two  applications  for  two  patents  on  re- 
lated subjects,  and  withdrew  one  of  them,  as  a  condition 
of  the  allowance  of  the  other,  the  patent  granted  on  the 
allowed  application  will  not  be  construed  as  covering  the 
subject  of  the  application  which  was  withdrawn.294  And 
these  rules  apply  even  where  the  action  of  the  Patent 
Office  was  erroneous,  or  that  of  the  applicant  unneces- 
sary.295   It  has  been  held,  however,  that  in  order  that  pro- 

puting   Scale   Co.   v.    Automatic  Co.  v.  Bankers'  Registering  Safe 

Scale     Co.,     204     U.     S.     609,  Co.,  224  F.  R.  506,  1915. 

1907.  292Stahl  v.  Williams,  52  F.  K. 

But  see  Veneer  Machinery  Co.  651,  1892. 

v.  Grand  Rapids  Chair  Co.,  227  293  Macbeth    v.    Gillinder,    54 

F.  R.  419,  1915;  Bullock  Electric  F.  R.  170,  1889. 

Mfg.  Co.  v.  Crocker-Wheeler  Co.,  294  Frederick  R.  Stearns  &  Co. 

141  F.  R.  101,  1905.  v.  Russell,  85  F.  R.  225,  1898. 

280  Marshall  &  Stearns  Co.  v.  295  Lapham  Dodge  Co.  v.  Sev- 

Murphy  Mfg.  Co.,  199  F.  R.  772,  erin,  40  F.  R.  763,  1889;  Shaw 

1912.  Stocking  Co.  v.  Pearson,  48  F.  R. 

291  Automatic    Recording    Safe  236,  1891. 


258  LETTERS   PATENT  [CHAP.    VII. 

ceedings  in  the  Patent  Office  shall  positively  operate  as 
an  estoppel  they  must  relate  to  the  "pith  and  marrow" 
of  an  alleged  improvement.296 

But  merely  incidental  amendments,  which  are  not  made 
in  pursuance  of  any  references  or  real  reasons  given  by  the 
Patent  Office,  but  are  made  in  deference  to  Patent  Office 
preferences  for  particular  phraseology,  will  not  be  con- 
strued to  limit  claims  so  as  to  make  them  narrower  than 
the  inventions  they  were  designed  to  cover.297  And  no 
amendment  made  to  meet  an  objection  of  the  Patent 
Office,  will  be  construed  to  disclaim  the  patentee's  actual 
invention,  if  that  construction  can  be  avoided  without 
doing  violence  to  the  obvious  meaning  of  the  language.298 
Furthermore,  concessions  addressed  to  the  Examiner 
made  in  arguments  of  the  applicant  which  are  not  carried 
into  the  claims  do  not  limit  the  claims  as  finally  allowed,299 
and  an  amendment  proposed  but  subsequently  withdrawn 
cannot  be  construed  to  impose  a  limitation  on  the  claim 
as  issued.300 

§  188.  The  laws  which  were  in  force  when  any  particular 
patent  was  granted,  are  the  laws  according  to  which  it 
must  be  construed; 301  and  a  special  statute  relevant  to 
any  particular  patent  is  ingrafted  on  the  general  patent 

2*>  U.  S.  Peg-Wood  Co.  v.  B.  F.  2"  Boyer   v.   Keller   Tool   Co., 

Sturtevant  Co.,   125  F.  R.  382,  127  F.   R.   130,   1904;  Fullerton 

1903.  Walnut  Growers  Ass'n  v.  Ander- 

207  Rhodes  v.  Lincoln  Press  Drill  son   Barngrover   Mfg.    Co.,    166 

Co.,  64  F.  R.  220,  1894;  Hillborn  F.    R.    443,    1908;    M'Cormick 

v.  Hale  &  Kilburn  Mfg.  Co.,  69  W.   P.   Cement   Co.   v.   Medusa 

F.    R.    960,    1895;    Consolidated  Concrete    Waterproof    Co.,    222 

Fastener      Co.     v.      Columbian  F.  R.  288,  1915. 

Fastener    Co.,    79    F.    R.    798,  30°  Diamond  Match  Co.  v.  Ruby 

1897.  Match  Co.,  127  F.  R.  341,  1904. 

298  Westinghouse  v.  Brake  Co.,  301  McClurg    v.    Kingsland,    1 

66  F.  R.  1006,  1895.  Howard,  202,  1843. 


CHAP.    VII.] 


LETTERS    PATENT 


259 


statutes,    and    must    be    construed    harmoniously    with 
them.302 

§  189.  Since  letters  patent  are  contracts,303  questions 
of  construction  are  questions  of  law  for  the  judge,  not 
questions  of  fact  for  the  jury.304  As  it  cannot  be  expected, 
however,  that  judges  will  always  possess  the  requisite 
knowledge  of  the  meaning  of  the  terms  of  art  or  science 
used  in  letters  patent,  it  often  becomes  necessary  that 
they  should  avail  themselves  of  the  light  furnished  by 
experts  relevant  to  the  significance  of  such  words  and 
phrases.305  Such  is  especially  the  case  when  electric,  mag- 
netic and  chemical  patents  are  involved.306  Some  courts 
have  held  that  it  is  proper  to  disregard  patents  put  in 
evidence  to  prove  anticipation  when  they  are  not  ex- 
plained.307 Experts  are  not  required  and  in  fact  the  use 
of  their  testimony  is  discouraged  in  cases  in  which  the 

302  Evans  v.  Eaton,  3  Wheaton,      payment  Car  Sales  Co.  v.  Orange 

County  Traction  Co.,  221  F.  R. 
939,  1915;  Brothers  v.  Lidgerwood 
Mfg.  Co.,  223  F.  R.  359,  1915. 
See  Section  499. 

305  Loom  Co.  v.  Higgins,  105 
U.  S.  580,  1881;  Fay  v.  Mason, 
127  F.  R.  325,  1903;  Charmbury 
v.  Walden,  141  F.  R.  373,  1905; 
Fried,  Krupp  Aktien-Gesellschaft 
v.  Midvale  Steel  Co.,  191  F.  R. 
588,  1911. 

306  Sundh  Electric  Co.  v.  Gen- 
eral Electric  Co.,  204  F.  R.  277, 
1913. 

307  Benbow-Brammer  Mfg.  Co. 
v.  Heffron-Tanner  Co.,  144  F.  R. 
429,  1906;  Bell  v.  MacKinnon, 
148  F.  R.  205,  1906;  General 
Electric  Co.  v.  Germania  Electric 
Co.,  174  F.  R.  1013,  1909. 


454,  1818;  Bloomer  v.  McQuewan, 
14  Howard,  539,  1852. 

303  Denning  Wire  &  Fence  Co. 
v.  Am.  Steel  &  Wire  Co.,  169  F.  R. 
793,  1909;  Century  Electric  Co. 
v.  Westinghouse  Electric  Mfg. 
Co.,  191  F.  R.  350,  1911;  Fried, 
Krupp  Aktien  -Gesellschaft  v. 
Midvale  Steel  Co.,  191  F.  R.  588, 
1911;  O'Brien-Worthen  Co.  v. 
Stempel,  209  F.  R.  847,  1913; 
Am.  Roll  Gold  Leaf  Co.  v.  W.  H. 
Coe  Mfg.  Co.,  212  F.  R.  720, 1914; 
Railroad  Supply  Co.  v.  Hart  Steel 
Co.,  222  F.  R.  261,  1915;  O.  H. 
Jewell  Filter  Co.  v.  Jackson,  140 
F.  R.  340,  1905. 

304  Winans  v.  Denmead,  15 
Howard,  330,  1853;  Coupe  v. 
Royer,  155  U.  S.  565,  1894;  Pre- 


260  LETTERS    PATENT  [CHAP.    VII. 

mechanical  details  are  simple  and  the  issue  of  infringe- 
ment sharply  defined.808  The  judges  are  not  obliged  to 
follow  blindly  the  testimony  of  experts.  They  may  dis- 
regard it  if  it  appears  to  them  to  be  unreasonable.309 
While  the  testimony  of  experts  relevant  to  the  meaning 
of  particular  words  or  phrases  in  letters  patent,  is  to  this 
extent  admissible,  such  testimony  is  inadmissible  on  the 
question  of  the  construction  of  the  letters  patent  as  a 
whole.310 

§  190.  In  the  absence  of  contrary  evidence,  the  inven- 
tion covered  by  a  particular  letters  patent  is  presumed  to 
be  identical  with  that  covered  by  the  application  on  which 
those  letters  patent  were  granted.311 

§  191.  All  persons  are  chargeable  with  notice  of  the  con- 
tents of  all  letters  patent  of  the  United  States,  because 
those  letters  patent  are  matters  of  public  record.312  But 
those  letters  patent  are  so  numerous  and  so  various,  and 
many  of  them  are  so  abstruse  and  so  complicated,  that 
it  is  far  beyond  the  power  of  the  strongest  intellect,  to 
learn  in  a  lifetime  the  contents  of  them  all. 

More  than  four  hundred  thousand  letters  patent  of  the 
United  States  were  in  force  in  1903;  and  nearly  as  many 
others  expired  before  the  end  of  that  year.  The  unexpired 
patents  contained  more  than  two  millions  of  claims;  the 
validity  of  each  of  which  depends  on  the  question  whether 
its  subject  was  a  new  and  useful  invention,  as  compared 
with  all  prior  patents  and  printed  publications  anywhere 
in  the  world.    And  the  question  whether  any  process  can 

308  Fay  v.  Mason,  127  F.  R.  325,          310  Corning  v.  Burden,  15  How- 

1903;  Hardinge  Conical  Mill  Co.  ard,  252,  1853. 
v.    Abbe    Engineering    Co.,    195         311  Loom  Co.   v.   Higgins,    105 

F.  R.  936,  1912.  U.  S.  580,  1881. 

309Winans  v.  Railroad  Co.,  21  312Boyden  v.  Burke,  14  How- 
Howard,  88,  1858.  ard,  575,  1852. 


CHAP.    VII.]  LETTERS    PATENT  2(>1 

be  performed,  or  any  machine,  manufacture,  composition 
of  matter  or  design,  can  be  copied,  made,  used  or  sold, 
without  infringing  any  unexpired  United  States  patent, 
is  a  question  which  depends  on  its  non-conformity  with 
every  one  of  the  two  millions  of  claims  of  those  patents. 
To  investigate  and  answer  such  of  these  questions  as  arise 
in  a  particular  manufacturing  enterprise,  or  in  a  particular 
litigation,  is  a  work  which  can  be  done  only  by  a  patent 
expert;  and  a  patent  expert  who  performs  that  work  in 
a  large  variety  of  complicated  cases,  in  many  different 
arts,  must  employ  extensive  information,  exercise  pene- 
trating power  of  analysis,  and  carry  as  best  he  may,  a 
heavy  responsibility. 

§  191a.  Property  in  patents  is  not  taxable  by  state 
authority;  because  such  taxation  would  constitute  inter- 
ference with  rights  created  by  national  authority,  and 
would,  therefore,  be  contrary  to  the  Constitution  of  the 
United  States.313  Patents  for  inventions  are  taxable  by 
national  authority;  though  no  statute  providing  for  any 
such  taxation  has  ever  been  enacted  by  Congress.  Such 
taxation,  if  it  were  to  be  prescribed,  would  be  direct  tax- 
ation as  distinguished  from  being  a  duty,  impost  or  ex- 
cise;314 and  would,  therefore,  necessarily  be  apportioned 
among  the  several  States,  in  proportion  to  their  respective 
populations  as  ascertained  by  the  last  preceding  national 
census.315  That  constitutional  plan  of  direct  taxation 
would  operate  so  unequally,  if  it  were  to  be  applied  to 
property  in  patents,  that  no  enlightened  statesman  or 
publicist  would  support  any  proposal  to  enact  a  national 
statute  providing  for  such  taxation.     For  these  reasons, 

313  M'Culloch  v.  Maryland,  4  &  Trust  Co.,  158  U.  S.  601, 
Wheaton,  436,  1819.  1895. 

314  Pollock    v.    Farmers'    Loan  3I5  Constitution  of  the  United 

States,  Article  1,  Section  9. 


262  LETTERS    PATENT  [CHAP.    \ll. 

the  freedom  from  taxation,  which  letters  patent  of  the 
United  States  have  had,  from  the  beginning  of  their  is- 
suance in  the  eighteenth  century,  will  undoubtedly  con- 
tinue as  long  as  the  Constitution  of  the  United  States 
continues  unchanged  in  respect  of  the  subject  of  taxation, 
and  in  respect  of  the  relations  of  the  Nation  to  the  States. 


CHAPTER  VIII 


DISCLAIMERS 


192.  Statutory    authorization    of 

disclaimers. 

193.  Statutory  prescriptions,  rele- 

vant to  disclaimers. 

194.  Errors    which    justify    dis- 

claimers. 

195.  Mistakes  of  fact,  relevant  to 

novelty. 

196.  Mistakes  of  law,  relevant  to 

invention. 

197.  Claims  void  for  want  of  util- 

ity. 

198.  Proper  disclaimers. 

199.  Improper  disclaimers. 

200.  Immaterial  parts. 

201.  Reissue  claims. 


202.  Fraudulent  or  deceptive  in- 

tention. 

203.  Effect  of  unreasonable  delay 

to  file  a  disclaimer. 

204.  Beginning    of    unreasonable 

delay  to  file  a  disclaimer. 

205.  Costs,  where  a  necessary  dis- 

claimer has  not  been  filed. 

206.  Extent  of  disclaimant's  in- 

terest. 

207.  Construction  of  letters  pat- 

ent after  a  disclaimer. 

208.  Disclaimers     filed     pending 

litigation. 

209.  Disclaimers  required  by  ju- 

dicial decisions. 


§  192.  The  statutory  provisions  relevant  to  disclaimers 
originated  in  1837,  and  have  never  been  substantially 
changed.  Sections  7  and  9  of  the  Patent  Act  of  that  year, l 
embodied  those  provisions;  and  those  sections  continued 
in  force  till  July  8,  1870,  when  they  were  substantially 
re-enacted  as  Sections  54  and  60  of  the  Consolidated  Pat- 
ent Act  of  that  date.2  In  1874,  the  latter  sections  were, 
in  their  turn,  re-enacted,  without  any  material  change,  as 
Sections  4917  and  4922  of  the  Revised  Statutes.  It  would 
have  been  better  statute  writing,  if  those  two  sections  had 


1  5  Statutes  at  Large,  Ch.  45, 
Sections  7  and  9,  p.  193. 

2 16    Statutes    at    Large,    Ch. 


230,  Sections  54  and  60,  p.  206; 
Taylor  v.  Archer,  8  Blatch.  318, 
1871. 

263 


264  DISCLAIMERS  [CHAP.    VIII. 

always  been  blended  together  into  one  clear  and  compre- 
hensive paragrapli.  Referring  to  the  same  subject,  and 
standing,  as  they  always  have,  in  the  same  statute,  they 
must  undoubtedly  be  construed  together;  '■'  and  the  law 
they  embody,  must  be  set  forth,  by  extracting  from  both 
sections,  all  the  material  meaning  of  both,  and  by  incor- 
porating that  meaning,  together  with  the  case  law  of  the 
subject,  into  one  systematic  explanation.  Let  that  there- 
fore be  the  present  attempt. 

§  193.  Whenever  through  inadvertence,  accident,  or 
mistake,  and  without  any  fraudulent  or  deceptive  inten- 
tion, a  patentee  has,  in  his  specification,  claimed  materi- 
ally more  than  that  of  which  he  was  the  first  inventor,  his 
patent  shall  be  valid  for  whatever  is  justly  his  own;  and 
every  such  patentee,  his  executors,  administrators,  or 
assigns,  whether  of  the  whole  or  any  sectional  interest 
in  the  patent,  may  maintain  a  suit  at  law  or  in  equity, 
for  the  infringement  of  such  part,  if  it  is  a  material  and 
substantial  part  of  the  thing  patented,  and  is  definitely 
distinguishable  from  the  parts  claimed  without  right. 
But  in  every  such  case,  in  which  a  judgment  or  decree 
shall  be  rendered  for  the  plaintiff,  no  costs  shall  be  re- 
covered, unless  the  proper  disclaimer  was  entered  in  the 
Patent  Office,  before  the  commencement  of  the  suit.  But 
no  patentee  shall  be  entitled  to  maintain  any  such  suit,  if 
he  has  unreasonably  neglected  or  delayed  to  enter  a  dis- 
claimer. And  any  such  patentee,  his  heirs  or  assigns, 
whether  of  the  whole  or  of  any  sectional  interest  therein, 
may,  on  payment  of  the  fee  required  by  law,  make  dis- 
claimer of  such  parts  of  the  subject-matter  of  the  patent, 
as  he  shall  not  choose  to  longer  claim,  stating  therein  the 
extent  of  his  interest  in  such  patent.     Such  disclaimer 

3Hailes  v.  Stove  Co.,  123  U.  S.  588,  1887;  Sessions  v.  Romadka, 
145  U.  S.  41,  1892. 


CHAP.    VIII.]  DISCLAIMERS  265 

shall  be  in  writing,  attested  by  one  or  more  wit  noses,  and 
recorded  in  the  Patent  Office,  and  shall  thereafter  be 
considered  a  part  of  the  original  specification,  to  the 
extent  of  the  interest  possessed  by  the  disclaimant  and  by 
those  claiming  under  him  after  the  record  thereof.  But 
no  such  disclaimer  shall  affect  any  action  pending  at  the 
time  of  its  being  filed,  except  so  far  as  may  relate  to  the 
question  of  unreasonable  neglect  or  delay  in  filing  it.' 

§  194.  The  primary  fact  which  brings  the  law  stated  in 
the  last  section  into  play,  is  the  claiming  by  a  patentee  of 
materially  more  in  his  patent  than  he  was  entitled  to 
claim.5  Such  errors  may  spring  from  inadvertence. 
That  is  to  say,  they  may  spring  from  failure,  on  the  part 
of  the  writer  of  the  claims,  to  exercise  proper  care  in  pen- 
ning them.  So  also,  they  may  arise  from  accident:  from 
chances  against  which  even  diligent  care  cannot  always 
guard.  But  mistake  is  the  most  common  source  of  such 
errors;  and  such  errors  may  arise  from  mistake  of  fact  or 
from  mistake  of  law.6 

§  195.  Mistakes  of  fact,  relative  to  how  much  of  a  de- 
scribed process,  machine  or  manufacture  was  first  invented 
by  its  patentee,  frequently  follow  from  lack  of  full  infor- 
mation touching  what  was  previously  invented  by  others. 
Litigation  may  alone  disclose  the  fact  that  the  patentee's 
claims  are  too  numerous  or  too  broad  to  be  consistent 
with  novelty.  Whenever  this  occurs,  it  is  clear  that  the 
patentee  ought  no  longer  to  appear  to  hold  an  exclusive 
right  to  anything  which  he  was  not  the  first  to  invent. 
To  this  end,  the  statute  provides  that  he  must  disclaim 

4  Revised  Statutes,  Sections  Ft.  Wayne  Electric  Light  Co.,  40 
4917  and  4922  blended  together.        F.  R.  835,  1889. 

■  Hailes  v.  Stove  Co.,  123  U.  S.  6  Electrical  Accumulator  Co.  v. 

588,  1887;  Brush  Electric  Co.  v.      Julien  Electric  Co.,  38  F.  R.  134, 

1889. 


266  DISCLAIMERS  [CHAP.    VIII. 

that  part,  within  a  reasonable  lime,  or,  in  default  thereof, 
must  suffer  the  statutory  consequences.  On  the  other 
hand,  it  is  equally  clear,  that  if  the  patentee  is  willing  to 
eliminate  from  his  claims,  everything  which  later  informa- 
tion shows  had  been  invented  before  him,  he  ought  to  be 
allowed  to  retain  his  exclusive  right  to  the  residue.  To 
this  end,  the  statute  provides  that  if  within  a  reasonable 
time,  he  disclaims  what  was  another's,  he  shall  be  enabled 
to  enforce  his  patent  as  far  as  it  covers  what  was  his  own 
invention.  But  a  disclaimer  cannot  confine  a  claim  to 
ground  which  does  not  appear  in  the  patent  to  constitute 
an  invention;  even  where  that  ground  is  narrower  than 
that  which  was  originally  claimed  in  the  patent.7 

§  196.  A  mistake  of  law,  which  consists  in  claiming 
something  not  patentable,  may  also  be  remedied  by  dis- 
claimer.8 The  law  which  permits  a  patentee  to  disclaim, 
is  remedial.  It  is  intended  for  the  protection  of  the  pat- 
entee, as  well  as  for  the  protection  of  the  public.  The 
evil  to  be  remedied  is  the  same,  where  a  patentee  has 
claimed  more  than  he  ought,  whether  that  result  sprang 
from  the  fact  that  another  invented  it  before  him,  or 
sprang  from  the  fact  that  what  he  produced  was  not  an 
invention  at  all.  For  this  reason,  the  Supreme  Court 
held  that  the  eighth  claim  of  Morse  might  be  disclaimed, 
after  having  been  held  void  for  want  of  patentability, 
with  the  same  effect  as  though  it  had  been  held  void  for 
want  of  novelty.  The  same  reason  would  also  permit  a 
patentee  to  disclaim  any  claim  which  is  void  for  want  of 
invention.  Indeed  the  statute  expressly  applies  to  such 
a  case,  for  no  man  can  be  the  first  inventor  of  anything 
which  is  not  an  invention.  He  may  be  its  first  discov- 
erer, if  it  is  a  law  of  nature,  or  its  first  constructor,  if  it  is  a 

7  Hailes  v.  Albany  Stove  Co.,  8  O'Reilly  v.  Morse,  15  Howard, 
123  U.  S.  587,  1887.  120.  1853. 


CHAP.    VIII.]  DISCLAIMERS  267 

product  of  mere  mechanical  skill,  but  its  first  inventor  he 
cannot  be.  And  a  mistake  of  law,  which  consisted  in 
unlawfully  claiming,  in  separate  claims,  in  one  patent,  sev- 
eral independent  inventions,  may  be  remedied  by  dis- 
claiming enough  claims  to  give  to  the  patent  the  neces- 
sary unity.9 

§  197.  There  appears  to  be  no  warrant  in  the  statute, 
for  disclaiming  any  claim  which  is  void  for  want  of  utility, 
and  for  no  other  cause.  An  inventor  of  a  new  thing  may 
generally  ascertain  its  character  in  point  of  utility  before 
applying  for  a  patent.  If  he  can  do  so,  he  ought  to  do  so, 
and  thus  shield  the  public  from  a  waste  of  time  involved 
in  examining  and  judging  useless  contrivances.  Where  a 
patent  has  but  one  claim,  and  where  the  matter  covered 
by  that  claim  is  useless,  no  disclaimer  could  make  that 
patent  valid.  Where  a  part  only  of  the  claims  of  a  patent 
are  void  for  want  of  utility,  and  for  no  other  cause,  the 
void  claims  are  not  injurious  to  the  valid  ones,  and  there- 
fore no  disclaimer  is  needed  in  any  such  case.10 

And  no  disclaimer  is  necessary  where  some,  but  not  all, 
of  the  claims  of  a  patent  are  void,  by  reason  of  constructive 
abandonment,  resulting  from  public  use  or  sale  of  the  sub- 
jects of  those  particular  claims,  more  than  two  years  prior 
to  the  application  for  the  patent.11 

Where  two  patents  are  applied  for  on  the  same  day,  and 
are  granted  on  the  same  day,  to  the  same  inventor,  for  the 
same  invention;  the  owner  of  them  has  the  lawful  power 
to  choose  which  one  of  those  patents  he  will  retain,  but  he 
must  somehow  relinquish   the  other.12     He  cannot  rid 

9  Sessions  v.  Romadka,  145  U.  S.  »  Whitney  v.  B.  &  A.  R.  Co.,  50 
40,     1892;    Manhattan    General      F.  R.  72,  1892. 

Const.  Co.  v.  Helios-Eyton  Co.,  12  Electrical  Accumulator  Co.  v. 

135  F.  R.  785,  1905.  Brush  Electric  Co.,  52  F.  R.  138, 

10  See  Section  205.  1892. 


268  DISCLAIMERS  [CHAP.    VIII. 

himself  of  his  superfluous  patent,  in  such  a  case,  by  means 
of  a  disclaimer  under  the  disclaimer  statutes;  but  he  can 
undoubtedly  do  so  by  means  of  a  surrender  of  his  super- 
fluous patent,  uncoupled  with  any  application  for  a  reissue 
thereof. 

§  198.  The  statute  provides  that  a  disclaimer,  to  be 
effective,  must  leave  claimed  by  the  patent,  at  least  one 
definitely  distinguishable  and  material  part  of  the  original 
subject  of  the  patent.  That  result  is  commonly  accom- 
plished by  disclaiming  one  or  more  claims,  while  leaving 
one  or  more  other  and  independent  claims  undisturbed 
in  the  patent.  But  that  result  can  be  sometimes  accom- 
plished in  some  other  way. 

For  example,  where  two  or  more  claims  in  substance, 
are  combined  in  one  claim  in  form,  by  the  use  of  the 
words  "with  or  without"  or  by  use  of  the  word  "or" 
alone,  a  disclaimer  may  be  made  to  expunge  one  of 
those  inventions  from  that  claim,  without  disturbing  any 
other.13 

And  where  a  patent  contains  a  proper  specific  claim, 
and  also  a  generic  claim  which  covers  not  only  the  sub- 
ject of  the  specific  claim,  but  also  covers  other  matter 
which  requires  to  be  disclaimed,  that  result  can  be  accom- 
plished by  a  disclaimer  of  the  generic  claim,  without  any 
injury  resulting  to  the  specific  claim,  from  that  dis- 
claimer.14 

And  where  an  invention  is  limited  by  the  prior  art,  in 
some  particular  in  which  the  patent  states  that  it  is  not 
limited,  that  statement  may  be  removed  by  a  disclaimer, 
so  as  to  confine  the  construction  of  the  claim  of  the  pat- 

>3Tuck  v.  Bramhill,  6  Blatch.  Electric    Co.,    38     F.     R.     134, 

95,    1868;    Taylor    v.    Archer,    8  1889. 

Blatch.     318,     1871;     Electrical  14  Graham  v.  Earl,  82  F.  R.  740, 

Accumulator      Co.      v.       Julien  1897. 


CHAP.    VIII.]  DISCLAIMERS  2(>9 

ent,  to  the  boundaries  to  which  the  invention  is  limited 
by  the  prior  art.1"' 

And  where  the  actual  invention  of  a  patentee,  consisted 
of  the  parts  specified  in  a  combination  claim,  plus  some 
other  element  specified  in  the  description,  as  being  usable 
with  the  parts  specified  in  the  claim,  the  claim  may  be 
restored  to  its  proper  limits,  by  the  addition  of  that  ele- 
ment thereto,  by  means  of  a  disclaimer;  if  that  result  can 
be  accomplished  by  disclaiming  such  statements  in  the 
description,  as  indicate  that  that  element  can  be  omitted 
from  the  subject  of  the  patent.16 

§  199.  Where  the  invention  of  a  patentee  consisted  in  a 
combination  of  less  than  all  of  the  parts  specified  in  a  com- 
bination claim  in  his  patent,  he  cannot  disclaim  the  surplus 
parts,  and  afterward  hold  as  infringers,  those  who  make, 
use  or  sell  the  other  parts  alone,  in  addition  to  thus  hold- 
ing those  who  make,  use  or  sell  all  the  parts  of  the  original 
claim;  because  that  operation  would  broaden  the  pat- 
ent instead  of  narrowing  it;  and  because  that  result 
would  be  contrary  to  the  purpose  of  the  statutes  of  dis- 
claimers.17 

And  where  the  only  invention  left  to  a  patentee  by  the 
prior  art,  is  shown  in  the  drawings  of  his  patent,  but  is  not 
mentioned  in  the  description,  or  attended  to  in  any  claim 
of  that  document ;  that  invention  is  not  such  a  part  of  the 
subject  of  the  patent,  as  can  be  monopolized  by  disclaim- 
ing all  that  the  patent  described.18 

§  200.  There  is  one  difference   between  the  two  dis- 

15  Carnegie  Steel  Co.  v.  Cam-          1S  Hurlbut   v.    Schillinger,    130 
bria   Iron   Co.,   185    U.   S.   436,      U.  S.  463,  1889. 
1902;     Schwarzwalder     v.     New  "  Cerealine  Mfg.  Co.  v.  Bates, 

York  Filter  Co.,  66   F.    R.    152,      77  F.  R.  883,  1897. 
1895.  18Hailes  v.  Albany  Stove  Co., 

123  U.  S.  587,  1887. 


270  DISCLAIMERS  [CHAP.    VIII. 

claimer  sections  of  the  Revised  Statutes,  which  it  is  proper 
i<>  mention  and  explain  in  this  place.  Section  4917  con- 
templates disclaimers  as  being  proper  whenever  a  patentee 
has  claimed  more  than  that  of  which  he  was  the  first  in- 
ventor; while  Section  4922  attends  only  to  cases  wherein 
the  excess  is  a  material  or  substantial  part  of  the  thing 
patented.  This  qualification  should  be  inserted  in  the 
two  sections,  as  construed  together,  because  Section  4922 
is  the  only  one  that  prescribes  any  evil  result  from  a 
failure  to  disclaim.  Neither  section  visits  any  infliction 
on  the  patentee,  for  omitting  to  disclaim  anything  which 
is  an  immaterial  part  of  the  thing  patented.  If,  there- 
fore, a  patentee  omits  to  disclaim  such  a  part  when  he 
discovers  it  to  have  been  known  before  his  invention 
thereof,  or  learns  that  it  is  not  an  invention  at  all,  he 
thereby  loses  no  right,  and  incurs  no  inconvenience.19  To 
file  a  disclaimer,  in  such  a  case,  is  an  act  which  is  at  once 
harmless  and  unnecessary. 

§  201.  Reissue  patents,  as  well  as  original  patents,  are 
entitled  to  the  benefits  of  the  law  relevant  to  disclaimers; 
and  that  too,  even  where  the  matter  disclaimed  was  not 
claimed  in  the  original,  but  only  in  a  reissue  granted  upon 
its  surrender.20  But  no  claim  which  was  in  an  original 
patent,  and  is  absent  from  a  reissue  thereof,  can  be  re- 
claimed by  a  disclaimer  of  the  changes  made  by  the  re- 
issue.21 Where  an  original  patent  was  surrendered,  and 
then  reissued  in  several  divisions;  that  is  to  say,  where 
several  reissue  patents  were  granted  for  separate  inven- 

19  Hall  v.  Wiles,  2  Blatch.  199,  Sargent,    117   U.   S.   553,    1886; 

1851;  Peek  v.  Frame,  5  Fisher,  Schillinger  v.  Gunther,  17  Blatch. 

212,  1871.  69,  1879;  Tyler  v.  Galloway,  12 

2°  O'Reilly  v.  Morse,  15  Howard,  F.  R.  567,  1882. 

62,    1853;  Gage  v.   Herring,   107  21  McMurray  v.  Mallory,  111  U. 

U.  S.  646,  1882;  Yale  Lock  Co.  v.  S.  109,  1883. 


CHAP.    VIII. J  DISCLAIMERS  271 

tions  described  in  an  original  patent,  a  suit  based  upon  one 
of  those  divisions  will  be  unaffected  by  the  fact  that  a 
claim  in  another  division  is  invalid  for  want  of  novelty,  or 
for  want  of  invention.  The  statute  relevant  to  dis- 
claimers has  no  application  to  such  cases.22 

§  202.  Fraudulent  or  deceptive  intention,  if  it  existed 
on  the  part  of  a  patentee,  when  claiming  materially  more 
than  that  of  which  he  was  the  first  inventor,  or  when 
claiming  that  which  was  not  patentable,  will  rightly  pre- 
vent him  from  receiving  any  benefit  from  a  disclaimer. 
The  statutory  provision  is  in  harmony  with  the  principles 
of  equity :  a  system  which  always  declines  to  extract  per- 
sons from  trouble  which  arose  from  their  own  moral 
turpitude. 

§  203.  The  statement  in  Section  4917,  that  under  the 
circumstances  therein  mentioned,  a  patentee's  patent 
shall  be  valid  as  to  all  that  part  of  the  invention  which  is 
truly  and  justly  his  own,  is  to  be  construed  in  connection 
with  the  provision  in  Section  4922,  that  the  patentee  shall 
not  be  entitled  to  recover  in  any  suit,  if  he  unreasonably 
neglects  or  delays  to  enter  a  disclaimer.  When  so  con- 
strued, the  two  sections  enact  that  where  a  patentee 
claims  materially  more  than  that  which  he  was  the  first 
to  invent,  his  patent  is  void,  unless  he  has  preserved  the 
right  to  disclaim  the  surplus;  and  that  he  may  fail  to  pre- 
serve that  right,  by  unreasonable  neglect  or  delay  to  enter 
a  disclaimer  in  the  Patent  Office. 

This  enactment  is  in  harmony  with  that  point  in  the 
common  law  which  made  a  patent  wholly  void,  if  any 
claim  in  it,  was  out  of  conformity  with  the  actual  inven- 
tion of  the  inventor  on  whose  application  it  was  granted.23 

§  204.  Neglect  or  delay  to  file  a  necessary  disclaimer,  be- 

22  Elastic  Fabrics  Co.  v.  Smith,  23  Hailes  v.  Albany  Stove  Co., 

100  U.  S.  Ill,  1879.  123  U.  S.  588,  1887. 


272  DISCLAIMERS  [CHAP.    VIII. 

gins  when  knowledge  is  brought  home  to  the  patentee, 
that  the  inventor  upon  whose  account  the  patent  was 
granted,  was  not  the  first  inventor  of  a  particular  thing 
claimed  in  the  patent,  and  material  to  the  subject  of  the 
patent  as  a  whole.-'  If,  however,  there  is  reasonable 
ground  for  difference  of  opinion  relevant  to  the  question 
whether  the  prior  patent,  or  prior  printed  publication,  or 
the  prior  process,  or  the  prior  thing,  so  brought  home  to 
the  knowledge  of  the  patentee,  really  negatives  the  nov- 
elty of  anything  claimed  by  him,  then  unreasonable  delay 
to  file  a  disclaimer  will  not  begin  until  that  question  is 
finally  settled  by  the  courts.25  Even  a  still  further  very 
short  delay  is  not  fatal  to  the  right  to  disclaim ; 26  and  if 
the  patent  has  expired  when  the  occasion  for  a  disclaimer 
is  established,  no  disclaimer  can  be  filed  or  is  necessary.27 
The  question  whether  the  delay  to  enter  a  disclaimer, 
in  a  particular  case,  was  or  was  not  unreasonable,  is  a 
mixed  question  of  law  and  fact,  to  be  decided  by  the  jury 
in  accordance  with  proper  instructions  from  the  court.28 
In  the  case  of  Seymour  v.  McCormick,29  the  Supreme 
Court,  when  speaking  of  the  question  of  the  necessity  for 
a  disclaimer  in  that  case,  and  of  the  question  of  unreason- 
able delay  in  entering  one,  said : ' '  Under  the  circumstances, 
the  question  is  one  of  law."  The  peculiar  collocation  of 
the  paragraph,  has  caused  some  courts  to  suppose  that 

24  O'Reilly  v.  Morse,  15  Howard,  -1  Yale  Lock  Co.  v.  Sargent,  117 
121,  1853;  Singer  v.  Walmsley,  1      U.  S.  553,  1885. 

Fisher,  558,  1860;  Parker  v.  Stiles,  28  Brooks  v.  Jenkins,  3  McLean, 

5  McLean,  44,  1849.  449,  1844;  Washburn  v.  Gould,  3 

25  Seymour  v.  McCormick,  19  Story,  122,  1844;  Burden  v.  Corn- 
Howard,  106,  1856;  Potter  v.  ing,  2  Fisher,  477,  1864;  Office 
Whitney,  1  Lowell,  87,  1866;  Hill  Specialty  Co.  v.  Globe  Co.,  65 
v.  Biddle,  27  F.  R.  561,  1886.  F.  R.  605,  1895. 

28  Kittle  v.  Hall,  30  F.  R.  39,  29  Seymour  v.   McCormick,   19 

1887.  Howard,  106,  1856. 


CHAP.    VIII.]  DISCLAIMERS  273 

the  question  thus  characterized,  was  the  question  of 
delay;30  but  really  it  must  have  been  the  question  of 
necessity.  The  latter  depended  wholly  upon  the  construc- 
tion of  the  patent,  and  was  therefore  a  question  of  law. 
Whether  or  not  a  particular  instance  of  delay  was  unrea- 
sonable, must  largely  depend  upon  the  circumstances 
which  surrounded  the  person  chargeable  therewith.  What 
those  circumstances  were  is  a  question  of  fact.  Whether 
they  constitute  an  excuse  for  the  delay  is  a  question  of 
law.  Whether  or  not  a  particular  instance  of  delay  to 
enter  a  necessary  disclaimer  was  unreasonable,  is  there- 
fore a  mixed  question  of  law  and  of  fact. 

§  205.  No  costs  can  be  recovered  by  the  plaintiff  in 
any  infringement  suit,  the  final  decision  of  which  shows  a 
necessity  for  a  disclaimer,  unless  such  a  disclaimer  was 
entered  in  the  Patent  Office  before  the  commencement 
of  the  suit.31  This  rule  applies  even  to  cases  where  the 
delay  to  enter  the  disclaimer  was  not  unreasonable.32 
But  a  verdict  on  all  the  claims  of  a  patent  entitles  the 
plaintiff  to  costs,  even  if,  after  that  verdict,  he  files  a 
disclaimer  to  one  or  more  of  the  claims  of  that  patent.3,1 
Failure  on  the  part  of  the  plaintiff  to  enter  the  proper  dis- 
claimer does  not,  however,  entitle  the  defendant  to  costs  as 
the  effect  of  the  failure  to  disclaim  is  negative  merely.34 

The  case  where  a  disclaimer  is  necessary  to  save  the 
patent  must,  however,  be  distinguished  from  the  case 

80  Singer  v.  Walmsley,  1  Fisher,  elty  Glass  Mfg.  Co.  v.  Brookfiekl, 

558,  1860;  Parker  v.  Stiles,  5  Mc-  172  F.  R.  221,  1909. 
Lean,  44,  1849.  32  O'Reilly  v.Morse,  15  Howard, 

31  Revised     Statutes,     Section  121,  1853;  Yale  Lock  Co.  v.  Sar- 

4922;  Reed  v.  Cutter,   1  Stoiy,  gent,  117  U.  S.  553,  1885. 
591,   1841;  Burdett  v.  Estey,  5         33  Peek  v.  Frame,  5  Fisher,  212, 

Bann.  &  Ard.  309,  1880;  Proctor  1871. 

v.  Brill,  16  F.  R.  791,  1883;  Nov-         34  Novelty   Glass   Mfg.   Co.   v. 

Brookfiekl,  172  F.  R.  221,  1909. 


274  DISCLAIMERS  [CHAP.    VIII. 

where  a  disclaimer  would  be  merely  proper,  as,  for  in- 
stance where  a  claim  is  invalid  for  incompleteness  of 
description,  as  in  the  latter  case  the  foregoing  rule  as  to 
costs  does  not  apply.35 

Judge  John  Lowell  remarked  that  where  a  plaintiff 
sues  on  a  part  of  the  claims  of  his  patent  only,  the  defend- 
ant will  not  be  permitted  to  raise  any  issue  relevant  to 
the  validity  of  any  other  claim,  with  intent  to  show  a 
necessity  for  a  disclaimer,  and  thus  to  escape  costs.36 
His  Honor  based  this  opinion  on  the  fact  that  more  ex- 
pense might  be  incurred  in  litigating  such  a  collateral 
issue,  than  would  be  justified  by  the  amount  of  the  costs 
depending  upon  its  decision.  But  general  rules  of  law  can 
hardly  be  based  on  considerations  of  what  is  expedient 
in  a  part  only  of  the  cases  to  which  those  rules  purport 
to  apply.  It  may  happen  that  the  costs  involved  in  a 
particular  litigation  are  large,  while  the  expense  involved 
in  proving  a  necessity  for  a  disclaimer  of  some  one  claim 
of  the  patent  is  small.  The  difference  between  the  two 
sums  may  sometimes  be  measured  by  thousands  of  dollars. 
A  judgment  or  a  decree  may  be  largely  lessened,  and  justly 
lessened,  if  a  defendant  is  permitted  to  prove  a  necessity 
for  a  disclaimer  of  a  claim  not  sued  upon.  In  view  of  these 
considerations,  it  is  possible  that  the  law  will  finally  be 
settled  otherwise  than  as  Judge  Lowell's  remark  would 
seem  to  forecast. 

§  206.  Disclaimers  are  required  to  state  the  extent  of 
the  interest  which  is  held  by  the  disclaimant  in  the  patent 
involved.37  If,  however,  the  disclaimant  is  the  original 
patentee,  and  the  disclaimer  states  that  fact,  and  is  silent 

38  National  Electric  Signalling  3B  American  Bell  Telephone  Co. 

Co.  v.  De  Forest  Wireless  Tele-  v.  Spencer,  8  F.  R.  512,  1881. 

graph  Co.,  140  F.  R.  449,  1905.  37  Revised     Statutes,     Section 

See  Section  197.  4917. 


CHAP.    VIII.]  DISCLAIMERS  275 

respecting  any  transfer  of  any  part  of  it,  the  fair  implica- 
tion is  that  he  still  owns  the  whole,  and  that  implication 
is  a  sufficient  statement  of  the  interest  of  the  patentee.38 
So  also,  if  an  executor  or  administrator,  in  whose  name  a 
patent  has  been  granted,  states  in  his  disclaimer  that  he 
is  the  patentee,  and  refers  to  the  patent  as  showing  his 
interest,  that  is  a  sufficient  statement  of  his  interest  in 
the  patent.39  But  if  only  one  of  several  joint  owners  or 
owners  in  common  of  a  patent,  should  file  a  disclaimer, 
no  other  owner  could  avail  himself  of  its  benefits,  nor 
could  it  affect  a  suit  brought  by  all  the  owners  jointly.40 

§  207.  The  construction  of  a  patent,  after  a  disclaimer 
has  been  properly  entered,  must  be  the  same  that  it  would 
have  been  if  the  matter  so  disclaimed  had  never  been 
claimed.41  The  mere  fact  of  disclaimer  is  no  evidence 
that  the  matter  disclaimed  is  a  part  of  the  prior  art.42 
And  where  a  disclaimer  disclaims  a  particular  thing  spe- 
cifically, that  thing  cannot  afterward  be  covered  by  the 
patent  as  being  an  equivalent  of  another  thing  which  was 
not  disclaimed.43  No  disclaimer,  in  order  to  be  effectual, 
needs  to  eliminate  anything  from  the  description;  though 
no  harm  will  follow  from  such  elimination,  if  it  is  confined 
to  matter  which  is  disclaimed,  and  which  is  not  needed 
to  show  the  nature  of  the  invention  which,  after  disclaimer, 
the  patent  continues  to  cover.44 

§  208.  Disclaimers  may  be  filed  pending  a  suit  on  the 

38  Silsby  v.  Foote,  14  Howard,  well  v.  Passaic  Print  Works,  107 
221,  1852.  F.  R.  467,  1901. 

39  Brooks  v.  Jenkins,  3  McLean,  42  Manhattan  General  Const. 
432,  1844.  Co.  v.  Helios-Upton  Co.,  135  F. 

40  Wyeth  v.  Stone,  1  Story,  294,  R.  785,  1905. 

1840.  "Cartridge    Co.    v.    Cartridge 

41  Dunbar  v.  Myers,  94  U.  S.      Co.,  112  U.  S.  639,  1884. 

187, 1876;  Schwarzwalder «.  Filter  44  Schillinger   v.    Gunther,     17 

Co.,  66  F.  R.  157,  1895;  Brace-      Blatch.  69,  1879. 


276  DISCLAIMERS  [CHAP.    VIII. 

patent,46  even  though  an  appeal  has  been  had;  IG  but  the 
plaintiff,  even  if  lie  prevails  in  the  suit,  can  recover  no 

costs.17  The  filing  of  a  disclaimer  at  that  stage  of  affairs 
does  not  affect  the  pending  action;  excepl  so  far  as  it  may 
bear  upon  the  question  whether  or  not  there  was  unreason- 
able delay  before  filing  it.48  That  question  is  an  open 
one  until  decided  on  its  merits,  regardless  of  whether  the 
disclaimer  was  filed  before  or  after  the  bringing  of  the 
suit.49  The  sooner  a  necessary  disclaimer  is  filed,  the  less 
danger  exists  that  the  preceding  delay  will  be  held  unrea- 
sonable. For  that  reason,  and  for  that  reason  alone,  it  is 
sometimes  wiser  to  file  a  disclaimer  pending  a  suit  than  to 
wait  till  the  case  is  heard,  or  still  longer,  till  it  is  decided. 
§  209.  An  important  question  arises  when  a  District 
Court,  before  any  disclaimer  has  been  filed,  decides  that 
a  part  of  the  claims  of  the  patent  in  suit  are  valid,  and 
have  been  infringed  by  the  defendant,  while  another  part 
are  void  for  want  of  novelty,  or  for  want  of  invention, 
and  ought  therefore  to  be  disclaimed.  Ought  the  judge 
in  such  a  case,  to  enter  a  decree  for  an  injunction  and  an 
account  on  the  valid  claims,  and  allow  the  complainant 
to  disclaim  the  others  or  not,  as  he  deems  most  prudent; 
or  should  he  decline  to  enter  any  decree  till  the  complain- 
ant shall  have  filed  a  disclaimer?  The  second  of  these 
courses  has  been   the  practice  in  the  first  circuit,50  in 

45  Filley  v.  Stove  Co.,  30  F.  R.      is  discussed  at  length),  163  F.  R. 
434,    1887;   Simplex   R'y   Appli-      852,  1908. 

ance   Co.   v.   Pressed   Steel   Car  4S  Revised     Statutes,     Section 

Co.,  189  F.  R.  70,  1911.  4917;  Sessions  v.  Romadka,  145 

46  Sample  v.  Am.  Soda  Foun-  U.  S.  41,  1892;  Tuck  v.  Bramhill, 
tain  Co.,  134  F.  R.  402,  1905.  6  Blatch.  95,  1868. 

47  Smith  v.  Nichols,  21  Wallace,  49  Reed  v.  Cutter,  1  Story,  590, 
117,  1874;  Suddard  v.  American  1841. 

Motor  Co.  (in  which  the  subject  50  Suddard  v.  American  Motor 

Co.,  163  F.  R.  852,  1908. 


CHAP.    VIII.] 


DISCLAIMERS 


277 


the  sixth,51  and,  prior  to  the  decision  of  Page  Machine 
Co.  v.  Dow,  Jones  &  Co.,52  in  the  second  circuit; r>3  prior 
to  the  Page  Machine  Co.  case  one  of  the  judges  in  the 
second  circuit  criticised  that  practice  as  arbitrary  and 
unjust,54  and  in  at  least  one  case  in  the  sixth  circuit  the 
practice  has  not  been  followed  by  the  Circuit  Court,  the 
reason  being  given  that  such  a  requirement  would  deprive 
the  complainant  of  the  benefit  of  an  appeal  from  the 
decree  in  so  far  as  it  held  the  disclaimed  claim  invalid.55 
The  same  reason  is  stated  in  the  Page  Machine  Co.  case. 
And  one  of  the  Judges  of  the  third  circuit  has  held  the 
first  course  to  be  the  proper  practice.56 


51  Odell  v.  Stout,  22  F.  R.  169, 
JSS4;  Herman  v.  Youngstown 
Car  Mfg.  Co.,  191  F.  R.  579, 1911; 
F.  D.  Cummer  &  Son  Co.  v.  Atlas 
Dryer  Co.,  193  F.  R.  993,  1912; 
Houser  v.  Starr,  203  F.  R.  264, 
1913. 

52  Page  Machine  Co.  v.  Dow, 
Jones  &  Co.,  168  F.  R.  703,  1909. 

53  Myers  v.  Frame,  8  Blatch. 
446,  1871;  Burdett  v.  Estey,  15 
Blatch.  349,  1878;  Christman  v. 
Rumsey,  17  Blatch.  148,  1879; 
Tyler  v.  Galloway,  12  F.  R,  567, 
1882;  Brainard  v.  Gramme,  12 
F.    R.   621,    1882;   Matthews   v. 


Spangenberg,  14  F.  R.  350,  1882; 
Hake  v.  Brown,  37  F.  R.  783, 
1889;  Union  Paper  Bag  Mach. 
Co.  v.  Waterbury,  39  F.  R.  392, 
1889;  Steam  Gauge  &  Lantern 
Co.  v.  Kennedy,  41  F.  R.  39, 
1889;  Smead  v.  School  District, 
44  F.  R.  617,  1890. 

54  Brush  Electric  Co.  v.  Accu- 
mulator Co.,  47  F.  R.  56,  1891; 
Ballard  v.  McCluskey,  58  F.  R. 
884,  1893. 

65  Plecker  v.  Poorman,  147  F. 
R.  528,  1905. 

56  Williams  v.  McNeely,  64  F. 
R.  768,  1894. 


CHAPTER    IX 


REISSUES 


210.  Beginning  of  the  history  of 

reissues. 

211.  First  statute  providing  for 

reissues,  1832. 

212.  Reissues  under   the  Patent 

Act  of  1836. 

213.  Amendments  made  in  the  re- 

issue law  by  the  Patent 
Act  of  1837. 

214.  Reissues  under  the  Patent 

Act  of  1870. 

215.  Reissues  under  the  Revised 

Statutes. 

216.  Subjects  of  reissues. 
216a.  Narrowed  reissues. 

217.  The  words   "specification," 

"defective,"  and  "insuffi- 
cient" defined. 

218.  Faults  which  justify  reissues. 
21Sa.  Reissues  correcting  patents 

without     changing     their 
scopes. 

219.  Broadened  reissues. 

220.  Inadvertence,  accident,  and 

mistake. 

221.  Question  of  the  conclusive- 

ness of  the  Commissioner's 
decision  relevant  to  exist- 
ence of  reissuable  faults, 
and  relevant  to  the  exist- 
tence  of  inadvertence,  ac- 
cident, or  mistake. 
278 


226.  The  doctrine  of  the  case  of 

Miller  v.  Brass  Co. 

227.  The  length  of  the  delay  con- 

templated by  the  doc- 
trine of  Miller  v.  Brass 
Co. 

229.  The  statute  relevant  to  two 

years'  prior  use  or  sale  has 
no  application  to  reissues 
as  such. 

230.  Surrender  of  patent. 

231.  Effect  of  surrender  with,  and 

also  without,  reissue. 

232.  Reissues  of  reissued  patents 

and  of  extended  patents, 
but  not  of  expired  patents, 
are  proper. 

233.  Same  invention. 

239.  "Where    there    is    neither 

model  nor  drawing." 

240.  New  matter. 

242.  Reissues  must  be  for  same 

invention  as  prior  reissues, 
and  also  for  same  inven- 
tion as  originals. 

243.  Legal  presumption  of  same- 

ness of  invention. 

244.  Omission,  as  it  affects  same- 

ness of  invention. 

245.  Reissues    for    sub-combina- 

tions. 

246.  Reissues  for  single  devices. 


CHAP.    IX.]  KEISSUES  279 

247.  Reissues     as     affected     by  and  assigns  may  procure 

substitution    of    equival-  reissues. 

ents.  251.  One  of  several  executors  may 

248.  Reissues  entitled  to  a  liberal  procure  a  reissue. 

construction.  252.  Rights   of   assignees   in   re- 

249.  Reissued    patents    may    be  issues. 

valid   as  to  some  claims      253.  The  rights  of  grantees  in  ro- 
while  void  to  as  others.  issues. 

250.  Executors,     administrators,      254.  The  legal  effect  of  reissued 

patents. 

§  210.  In  1821  James  Grant,  of  Providence,  Rhode 
Island,  received  letters  patent  of  the  United  States  for  an 
improved  mode  of  manufacturing  hat  bodies.  In  1825  he 
presented  a  petition  to  Henry  Clay,  Secretary  of  State, 
stating  that  the  specification  of  his  patent  was  defective, 
and  praying  that  his  patent  might  be  canceled,  and  a  new 
and  correct  one  granted,  embracing  the  same  improve- 
ments, so  far  as  they  were  set  forth  in  certain  new  specifi- 
cations, drawings  and  explanations  which  accompanied 
the  petition.  Though  there  was,  at  that  time,  no  statute 
which  authorized  any  such  proceeding,  yet,  on  the  advice 
of  William  Wirt,  the  Attorney  General,  and  in  the  name  of 
John  Quincy  Adams,  the  President  of  the  United  States, 
Mr.  Clay  canceled  the  letters  patent  of  Mr.  Grant,  and 
thereupon  issued  to  him  new  letters  patent,  for  the  same 
invention,  and  for  the  residue  of  the  term  covered  by  the 
original  document.  Annexed  to  the  new  letters,  and 
forming  part  thereof,  were  the  new  specifications,  draw- 
ings and  explanations/which  had  accompanied  Mr.  Grant's 
petition. 

In  the  case  of  Grant  v.  Raymond,1  the  validity  of  this 
proceeding  was  called  in  question  in  the  Supreme  Court, 
and  was  argued  in  the  negative  by  Daniel  Webster.     The 

1  Grant  v.  Raymond,  6  Peters,  243,  1832. 


280  REISSUES  [CHAP.    IX. 

Supreme  Court  sustained  the  validity  of  the  reissued 
patent,  od  the  general  spirit  and  objecl  of  the  patent  law, 
not  on  its  letter.  In  delivering  the  opinion  Chief  Justice 
Marshall  said:  "If  the  mistake  should  be  committed  in 
the  Department  of  State,  no  one  would  say  that  it  ought 
not  to  be  corrected.  All  would  admit  that  a  new  patent, 
correcting  the  error,  and  which  would  secure  to  the  pat- 
entee the  benefits  which  the  law  intended  to  secure,  ought 
to  be  issued.  And  yet  the  Act  does  not  in  terms  authorize 
a  new  patent,  even  in  that  case.  Its  emanation  is  not 
founded  on  the  words  of  the  law,  but  it  is  indispensably 
necessary  to  the  faithful  execution  of  the  solemn  promise 
made  by  the  United  States.  Why  should  not  the  same 
step  be  taken  for  the  same  purpose,  if  the  mistake  has 
innocently  been  committed  by  the  inventor  himself?" 
And  his  Honor  further  said:  "If,  by  an  innocent  mistake, 
the  instrument  introduced  to  secure  his  privilege  fails  in 
its  object,  the  public  ought  not  to  avail  itself  of  this  mis- 
take, and  to  appropriate  the  discoveiy  without  paying 
the  stipulated  consideration.  The  attempt  would  be  dis- 
reputable in  an  individual,  and  a  Court  of  Equity  might 
interpose  to  restrain  him." 

In  pursuance  of  the  doctrines  of  the  first  four  sentences 
quoted  above  from  Chief  Justice  Marshall,  the  Com- 
missioner may  cancel  a  patent  and  issue  a  corrected  one 
in  its  stead,  where  the  first  one  was  caused,  by  an  inad- 
vertent error  in  the  Patent  Office,  to  grant  less  to  the  in- 
ventor than  he  had  applied  for  and  was  entitled  to  re- 
ceive, and  where  the  inventor  refuses  to  accept  the  patent 
thus  limited.2 

And  it  was  in  accordance  with  the  same  doctrine,  that 
the  Commissioner  of  Patents  once  reissued  a  patent  to 
correct  an  error  in  its  drawing,   without  making  any 

2  Railway  Register  Mfg.  Co.  v.  Railroad  Co.,  23  F.  R.  593,  1885. 


CHAP.    IX.]  REISSUES  28J 

change  in  specification; 3  for  the  reissue  in  that  case  was 
not  provided  for  by  the  statute.4 

§  211.  In  accordance  with  the  spirit  of  the  decision  in 
Grant  v.  Raymond,  and  within  a  few  months  after  that 
decision  was  made,  Congress  enacted  a  statute  to  regulate 
the  granting  of  reissued  letters  patent.5  That  statute 
provided,  in  effect,  that  whenever  any  patent  should  be 
invalid  or  inoperative,  because  the  inventor,  by  inadver- 
tence, accident  or  mistake,  and  without  any  fraudulent  or 
deceptive  intention,  failed  to  conform  his  specification 
to  the  then  existing  statutory  requirements;  it  should  be 
lawful  for  the  Secretary  of  State,  upon  the  surrender  to 
him  of  such  patent,  and  the  delivery  to  him  of  a  sufficient 
statutory  specification,  to  cause  a  new  patent  to  be 
granted  to  the  same  inventor,  for  the  same  invention,  and 
for  the  residue  of  the  term  of  the  original  patent.  That 
statute  also  provided  that  the  right  to  receive  a  reissue, 
should  extend  to  executors,  administrators  or  assigns; 
and  that  the  reissue  patent  should  be  liable  to  the  same 
defences  as  the  original;  and  that  no  public  use  of  the  in- 
vention, after  the  grant  of  the  original  patent,  should  preju- 
dice the  right  of  the  patentee  to  recover  for  infringement 
of  the  reissue  patent,  committed  after  the  grant  thereof. 

§  212.  The  Patent  Act  of  1836 6  repealed  all  prior  stat- 
utes relevant  to  patents,  and  provided  a  more  elaborate 
system  in  place  of  the  repealed  laws.  Section  13  of  that 
Act  referred  to  reissues,  and  provided,  in  effect,  that 
whenever  any  patent  should  be  inoperative  or  invalid  be- 
cause the  inventor  had,  by  inadvertence,  accident,  or 
mistake,  and  without  any  fraudulent  or  deceptive  inten- 

3  Hobbs  v.  Beach,  180  U.  S.  394,  « 4  Statutes  at  Large,  Ch.  162, 
1901.  Section  3,  p.  559. 

4  Revised  Statutes,  Section  6  5  Statutes  at  Large,  Ch.  357, 
4916.  p.  117. 


282  REISSUES  [chap.   IX. 

tion,  made  his  description  or  specification  defective  or  in- 
sufficient, <>r  had  claimed  in  his  specification  more  than 

he  had  a  right  to  claim  as  new;  it  should  be  lawful  for  the 
Commissioner  of  Patents,  upon  the  surrender  to  him  <»f 
such  patent,  to  cause  a  new  patent  to  be  issued  to  the  same 
inventor,  for  the  same  invention,  in  accordance  with  the 
inventor's  corrected  description  and  specification,  and  for 
the  residue  of  the  term  of  the  original  patent.  This  stat- 
ute also  provided  that  the  right  to  receive  a  reissue 
should  extend  to  executors,  administrators  and  assigns, 
and  that  the  reissued  patent,  together  with  the  corrected 
description  and  specification,  should  have  the  same  effect 
in  law,  on  the  trial  of  all  actions  thereafter  commenced 
for  causes  subsequently  accruing,  as  though  the  same  had 
been  originally  filed  in  such  corrected  form  before  the 
issuing  of  the  original  patent. 

§  213.  The  Patent  Act  of  1837  7  made  some  additions  to 
the  statute  of  1836,  relevant  to  reissues.  Section  5  recog- 
nized a  right  in  a  patentee  to  demand  and  receive  several 
reissued  patents  for  distinct  parts  of  the  subject-matter  of 
his  surrendered  patent.  And  Section  8  provided,  that 
whenever  a  patent  should  be  returned  for  reissue,  the 
claims  thereof  should  be  subject  to  revision  and  restric- 
tion, in  the  same  manner  as  were  original  applications  for 
patents;  and  that  the  Commissioner  should  not  grant  any 
reissue,  until  the  applicant  should  have  entered  a  dis- 
claimer, or  altered  his  claim,  in  accordance  with  the  de- 
cision of  the  Commissioner;  and  that  the  applicant,  if 
dissatisfied  with  such  decision,  should  have  the  same 
remedy  by  way  of  appeal,  that  the  law  provided  in  cases  of 
original  applications. 

§  214.  The  Patent  Act  of  1870  8  substantially  re-enacted 

7  5  Statutes  at  Large,  Ch.  45,  8 16  Statutes  at  Large,  Ch.  230, 
p.  191.  p.  19S. 


CHAP.    IX.]  REISSUES  283 

the  law  of  reissues  as  it  had  been  embodied,  for  more  than 
thirty  years,  in  the  statutes  of  1836  and  1837,  but  re- 
enacted  that  law  with  a  few  modifications  and  additions. 
Where  the  old  law  used  the  phrase  "defective  or  insuffi- 
cient description  or  specification,"  the  new  law  used  the 
words  " defective  or  insufficient  specification."  Where 
the  old  statute  made  it  lawful  for  the  Commissioner  to 
reissue  a  patent,  the  new  statute  made  it  obligatory  upon 
him  to  do  so.  Where  the  old  law  recognized  a  right  in  a 
patentee  to  demand  and  receive  several  reissue  patents  in 
the  place  of  one  surrendered  patent,  the  new  law  provided 
that  the  Commissioner  might,  in  his  discretion,  cause 
several  such  patents  to  be  issued  upon  the  demand  of  the 
applicant.  The  provision  of  the  old  statute,  that  the 
applicant,  if  dissatisfied  with  the  decision  of  the  Com- 
missioner, should  have  the  same  remedy  and  be  entitled 
to  the  same  privileges  and  proceedings,  as  were  provided 
by  law  in  the  case  of  original  applications  for  patents,  was 
omitted  in  the  new  statute;  but  its  effect  was  retained,  by 
expressly  mentioning  reissues  in  those  sections  of  the  new 
statute,  which  provided  for  that  remedy,  and  for  those 
privileges  and  proceedings.9  Section  33  of  the  new 
statute  provided  further,  that  where  a  patent  was  to  be 
reissued  to  an  assignee  of  the  inventor,  the  application 
should  be  made,  and  the  specification  be  sworn  to,  by 
the  inventor,  if  he  be  living.  The  Patent  Act  of  March 
3,  1871, 10  prescribed  that  the  provision  of  Section  33,  just 
mentioned,  should  not  be  construed  to  apply  to  any  pat- 
ent, issued  and  assigned  before  July  8,  1870;  the  date  of 
the  approval  of  the  Act  of  which  that  section  formed  a 
part.    Another  new  provision  of  the  statute  of  1870,  was 

9 16  Statutes  at  Large,  Ch.  230,  10 16  Statutes  at  Large,  Ch.  132, 

Sections  46  to  52,  p.  204;  Ingersoll      p.  583. 
v.  Holt,  104  F.  R.  682,  1900. 


284  REISSUES  [chap.   IX. 

as  follows:  "No  new  matter  shall  be  introduced  Into  the 
specification,  nor  in  case  of  a  machine  patenl  shall  the 
model  or  drawings  be  amended,  except  by  each  oilier;  but 
where  there  is  neither  model  nor  drawing,  amendments 
may  be  made  upon  proof,  satisfactory  to  the  Commis- 
sioner, that  such  new  matter  or  amendment  was  a  part 
of  the  original  invention,  and  was  omitted  from  the  speci- 
fication by  inadvertence,  accident,  or  mistake,  as  afore- 
said." " 

§  215.  Section  4916  of  the  Revised  Statutes  is  substan- 
tially a  copy  of  Section  53  of  the  Statute  of  1870.  Section 
4895  of  the  Revised  Statutes,  re-enacted  the  provision 
above  cited  from  Section  33  of  the  Act  of  1870,  coupled 
with  the  statutory  construction  of  that  provision,  which 
was  contained  in  the  Patent  Act  of  1871,  and  which  was 
above  explained.  Sections  46  to  52  of  the  Act  of  1870, 
were  re-enacted  as  Sections  4909  to  4915  of  the  Revised 
Statutes.  Thus  the  law  of  reissues  underwent  no  change 
when  the  Revised  Statutes  were  approved.  The  reissue 
provisions  which  were  embodied  in  the  Act  of  1870,  are 
still  the  statutes  which  govern  the  subject. 

The  meritorious  ground  for  reissues,  as  stated  by  the 
Supreme  Court  in  Grant  v.  Raymond,  has  now  been  set 
forth;  and  the  subsequently  enacted  and  gradually  devel- 
oped statutory  law  on  the  subject  has  been  explained.  To 
explore  the  great  mass  of  relevant  adjudicated  cases,  and 
to  extract  from  those  cases  the  detailed  doctrines  of  the 
law  of  reissues,  is  the  engaging  work  upon  which  it  is  now 
in  order  to  enter. 

§  216.  To  be  the  subject  of  a  reissue  under  the  statu- 
tory law,  a  patent  must  be  invalid,  or  it  must  be  at  least 
inoperative.12    All  patents  that  are  invalid,  are  also  in- 

1  >  16  Statutes  at  Large,  Ch.  132,  12  Act  of  1832,  Section  3;  Act  of 

Section  53,  p.  206.  1836,  Section  13;  Act  of  1870,  Sec- 


CHAP.    IX.]  REISSUES  285 

operative.  If  the  two  words  had,  in  the  statutes,  been 
always  connected  with  the  word  "and,"  there  would  be 
ground  for  an  argument  that  they  were  used  synony- 
mously. In  fact,  however,  they  have  always  been  con- 
nected with  the  word  "or,"  thus  indicating  that  they  were 
not  intended  to  signify  the  same  thing.  What  they  do 
respectively  mean  is  to  be  ascertained  by  considering 
other  provisions  of  the  statute;  namely,  those  provisions 
which  indicate  the  causes  from  which  either  invalidity  or 
inoperativeness  must  have  sprung,  in  order  to  make  pat- 
ents reissuable.  To  have  that  effect,  either  of  those  faults 
must  have  resulted  from  a  defective  or  insufficient  speci- 
fication, or  from  the  patentee  claiming  more  than  he  had  a 
right  to  claim  as  new.  This  last  cause  of  fault  was  first 
mentioned  in  the  statute  of  1836.  In  the  following  year 
Congress  provided  that  patents  should  no  longer  be  held 
to  be  invalid  on  that  ground,  provided  proper  disclaimers 
were  reasonably  entered.13  Ever  since  1837,  therefore, 
faults  in  patents,  arising  from  patentees  claiming  more 
than  they  had  a  right  to  claim,  have  generally  been 
curable  by  disclaimers.14 

§  216a.  But  in  some  cases,  the  matter  in  a  patent,  which 
the  patentee  had  no  right  to  claim  as  new,  is  so  blended 
with  the  other  matter  in  the  patent,  that  it  cannot  be 
simply  cut  away  by  a  disclaimer,  and  can  best  be  removed 
by  rewriting  part  or  all  of  the  specification,  and  a  narrow 
reissue  obtained.  In  such  cases  the  remedy  by  reissue 
is  undoubtedly  lawful,  but  it  cannot  be  invoked  after  an 
excessively  unreasonable  delay  to  invoke  it; 15  though 

tion  53;  Revised  Statutes,  Section  brought  out  in  the  case  of  Motion 
4916.  Picture  Patents  Co.  v.  Laemmle, 

13  5  Statutes  at  Large,  Ch.  45,      214  F.  R.  787,  1914. 

Sections  7  and  9,  p.  193.  16  Pelzer  v.  Meyberg,  97  F.  R. 

14  Certain  distinctions  between      969, 1899. 
reissues     and      disclaimers     are 


286  REISSUES  [chap.   IX. 

the  strict  two-year  rule  of  Miller  r.  Brass  (Jo.,  hereinafter 
discussed  in  connection  with  broadened  reissues,  does  not 
apply,"'  and  such  delay  will  not  be  held  to  begin  till  the 
patentee  is  informed  of  the  facts  which  make  a  narrower 
claim  necessary.17  The  remedy  by  disclaimer,  where  it 
can  be  applied,  is  better  than  the  other,  because  the  remedy 
by  reissue  involves  the  loss  of  the  rights  of  action  under 
the  patent,  for  infringements  committed  before  the  re- 
issue is  granted. 

§  217.  The  meaning  of  the  word  "specification"  is 
that  of  the  words  "description  and  claim"  when  it  is 
used,  in  the  statutes,  separately  from  both  those  words.18 
In  the  reissue  section  of  the  Statute  of  1836,  the  word 
"description"  was  used  in  connection  with  the  word 
"specification,"  and  thus  limited  the  meaning  of  the  latter 
to  the  signification  of  the  word  "claim."  19  On  the  other 
hand,  in  the  fourth  sentence  of  Section  4916  of  the  Re- 
vised Statutes  the  word  "specification"  is  used  in  immedi- 
ate connection  with  the  word  "claim,"  and  is  therefore 
limited,  in  that  place,  to  the  meaning  of  the  word  "de- 
scription." 

The  word  "defective"  and  the  word  "insufficient"  are 
not  synonymous  in  this  statute,  as  at  first  thought  they 
may  appear  to  be.    The  former  word  means  "bad,"  and 

18  Conroy  v.  Penn  Electrical  &  Voegtly  Hardware  Co.  v.  Tabor 

Mfg.  Co.,  173  F.  R.  299,  1909;  Sash  Co.,  178  F.  R.  831,  1910. 

Sirocco  Engineering  Co.  v.  B.  F.  See  Autopiano  Co.  v.  American 

Sturtevant  Co.,   173  F.  R.  378,  Player   Action   Co.,    222   F.    R. 

1909;  Specialty  Machine  Co.  v.  276,  1915. 

Ashcroft  Mfg.  Co.,  213  F.  R.  35,  18  Wilson  v.  Coon,  18  Blatch. 
1914.                                                 ,  535, 1880;  M'Dowell  v.  Ideal  Con- 

17  Matthews  v.  Flower,  25  F.  R.  crete  Machine  Co.,  187  F.  R.  814, 

834,  1885;  Electrical  Accumulator  1911. 

Co.  v.  New  York  &  Harlem  R.  R.  19  Wilson  v.  Coon,   18  Blatch. 

Co.,  50  F.  R.  82,  1892;  Steiner  &  536, 1880. 


CHAP.    IX.]  KEISSTJES  287 

the  latter  means  " lacking."  A  description  may  be  com- 
plete, while  it  is  obscure  in  some  of  its  parts.  In  such  a 
case,  it  is  defective.  On  the  other  hand,  it  may  be  per- 
fectly clear,  as  far  as  it  goes,  while  omitting  all  references 
to  some  parts  of  the  thing  described.  In  such  a  case  it  is 
insufficient.  So  also,  a  claim  may  mistily  cover  the  whole 
invention  described,  but  being  liable  to  be  misunderstood, 
it  is  defective.  On  the  other  hand,  it  may  be  entirely  clear, 
while  it  is  narrower  than  the  invention,  and  therefore  in- 
sufficient to  cover  and  secure  the  latter. 

§  218.  From  the  foregoing  it  follows  that,  ever  since 
1836,  those  patents  which  were  invalid  or  inoperative  by 
reason  of  defective  or  insufficient  descriptions  or  claims, 
have  been  reissuable  under  the  statutes;  provided  their 
faults  arose  from  inadvertence,  accident  or  mistake,  and 
without  any  fraudulent  or  deceptive  intention.  This 
proviso  is  equally  imperative  in  all  cases.20  Assuming  it 
to  be  satisfied  in  all,  and  passing  the  provisions  relevant 
to  reissues  when  the  patentee  has  claimed  too  much,  it 
appears  that  the  remaining  faults  which  make  patents 
reissuable,  under  the  statutes,  are  four  in  number:  1.  In- 
validity arising  from  defective  description.  2.  Invalidity 
arising  from  insufficient  description.  3.  Invalidity  arising 
from  defective  claims.  4.  Inoperativeness  arising  from 
insufficient  claims. 

§  218a.  Invalidity  arising  from  defective  description,  or 
from  insufficient  description,  or  from  defective  claims, 
where  that  invalidity  arose  by  inadvertence,  accident  or 
mistake,  and  without  any  fraudulent  or  deceptive  inten- 
tion, may  undoubtedly  be  remedied  by  a  reissue,  where 
the  reissue  does  not  add  nor  broaden  any  claim.21     No 

20  Coon  v.  Wilson,  1 13  U.  S.  277,  21  Hart  &  Hegeman  Mfg.  Co.  v. 

1884;  Parker  &  Whipple  Co.  v.  Yale  Anchor  Electric  Co.,  92  F.  R. 
Clock  Co.,  123  U.  S.  103, 1887.  658,  1899. 


288  REISSUES  [  < "  1 1 A I  * .    IX. 

reissue  of  this  class  luts  ever  been  held  to  be  void,  as  a 
reissue,  in  any  adjudicated  case.  Such  reissues  are  indeed 
particularly  consistent  with  the  policy  of  the  patent  law, 

because  they  improve  the  information  of  an  invention, 
which  the  public  can  derive  from  a  patent,  and  thus  in- 
crease the  benefit  which  the  public  will  enjoy  on  account 
of  the  patent  after  it  shall  have  expired.  There  appears 
to  be  no  reason  why  the  remedy  of  reissue  may  not  be 
invoked,  in  a  case  of  this  class,  at  any  time  during  the 
life  of  a  patent.22 

§  219.  Claims  are  the  only  operative  parts  of  specifica- 
tions. If  an  inventor  has  produced  two  or  more  inven- 
tions so  allied  that  they  may  properly  be  secured  to  him 
in  one  letters  patent,  and  if  he  fully  describes  all  of  those 
inventions  in  the  descriptive  part  of  his  specification,  but 
covers  only  one  of  them  by  his  claims,  then  his  patent  is 
operative  as  to  one  of  those  inventions,  and  inoperative 
as  to  the  others.  Inoperativeness  of  that  kind  is  sufficient 
to  lay  the  foundation  of  a  right  to  a  reissue.23  And  where 
an  inventor  claims  his  invention  only  in  combination  with 
something  else,  his  patent  is  inoperative  as  to  that  inven- 
tion alone.24  Reissues  granted  in  these  classes  of  cases  are 
called  broadened  reissues.  Though  the  statute  does  not, 
under  that  name,  authorize  reissues  of  that  kind,  they 
are  authorized  by  the  general  terms  of  the  law; 25  and 
have   been    upheld    by    the   Supreme    Court   in    many 

"Sewing     Machine     Co.     v.  24  Jenkins  v.  Stetson,  32  F.  R. 

Frame,  24  F.  R.  596,  1884.  400,    1887;   Universal   Caster   & 

23  Thompson   v.   Wooster,    114  Foundry  Co.  v.  M.  B.  Schenck 

U.  S.  115,  1884;  Anilin  v.  Higgin,  Co.,  165  F.  R.  344,  1908. 

15  Blatch.  291,   1878;  Wilson  v.  25  Miller  v.  Brass  Co.,  104  U.  S. 

Coon,  18  Blatch.  535,  1880;  Giant  354,  1881;  A.  D.  Howe  Machine 

Powder  Co.  v.  Nitro  Powder  Co.,  Co.  v.  Coffield  Motor  Washer  Co., 

19  F.  R.  510,  1884;  Fay  v.  Mason,  197  F.  R.  541,  1912. 
120  F.  R.  510,  1903. 


CHAP.    IX.]  REISSUES  289 

cases;  26  and   have    been    expressly    approved    by    that 
tribunal.'-'7 

§  220.  Inadvertence,  accident  or  mistake,  must  have 
been  the  source  of  the  fault  in  letters  patent,  in  order  to 
make  them  reissuable  under  the  statute.28  Such  inadvert- 
ence or  accident  may  have  been  suffered,  or  such  mistake 
may  have  been  committed,  by  the  patentee  or  by  the 
Commissioner  of  Patents.29  The  statute  is  satisfied  on 
this  point,  where  the  patent  was  inoperative  by  reason  of 
insufficient  claims,  if  those  claims  were  made  too  few  or 
too  narrow  because  the  patentee  was  mistaken  about  the 
state  of  the  art,30  or  because  the  patentee  or  his  solicitor, 
when  concerting  the  claims,  inadvertently  failed  to  make 
them  as  extensive  as  the  invention.31  So  also,  the  statute 
is  satisfied,  where  the  patent  was  inoperative  by  reason  of 
insufficient  claims,  if  those  claims  were  made  too  narrow 
because  the  Commissioner,  on  account  of  an  erroneous 
opinion  entertained  by  him,  refused  to  allow  them  to  be 
made  as  broad  as  they  ought  to  have  been,32  or  because 
of  an  erroneous  decision  made  by  him  in  an  interference 

26  Battin  v.  Taggert,  17  Howard,  30  National  Spring  Co.  v.  Mfg. 
74,  1854;  Morey  v.  Lockwood,  8  Co.,  12  Blatch.  89,  1874;  Bowers 
Wallace,  230,  1868;  Rubber  Co.  v.  v.  San  Francisco  Bridge  Co.,  69 
Goodyear,  9  Wallace,  788,  1869;  F.  R.  644,  1895;  Dunbar  v.  East- 
Corn-Planter  Patent,  23  Wallace,  ern  Elevating  Co.,  75  F.  R.  570, 

217,  1874;  Marsh  v.  Seymour,  97  1896;  Autopiano  Co.  v.  American 
U.  S.  356,  1877.  Player  Action  Co.,  222  F.  R.  276, 

»  Topliff  v.  Topliff,  145  U.  S.  1915. 

170,  1892.  31  Miller  v.  Brass  Co.,  104  U.  S. 

28  Revised  Statutes,  Section  352,  1881.  In  connection  with 
4916;  Fay  v.  Mason,  120  F.  R.  the  subject-matter  of  this  section 
510,  1903;  Stafford  Co.  v.  Cold-  see  M'Dowell  v.  Ideal  Concrete 
well-Gildard  Co.,  202  F.  R.  744,  Machine  Co.,  187  F.  R.  814, 
1913.  1911. 

29  Grant  v.  Raymond,  6  Peters,  32Morey  v.  Lockwood,  8  Wal- 

218,  1832.  lace,  230,  1868. 


L,(.)()  REISSUES  [('HAP.    IX. 

proceeding.33  But  the  statute  is  not  satisfied  where  the 
applicant  or  his  at  torney  cancels  a  rejected  claim  and  after- 
ward seeks  to  reclaim  it  by  a  reissue;34  or  to  make  a  new 
claim  which,  though  narrower  than  the  rejected  claim, 
is  broader  in  the  same  direction  than  the  claim  in  the 
patent;86  even  where  the  rejected  claim  was  canceled  from 
a  prior  application  of  the  same  inventor,  and  not  from  the 
particular  application  for  the  orginal  of  the  reissue.36  Nor 
is  the  statute  satisfied  in  any  case  where  the  new  claims  of 
the  reissue  were  intentionally  omitted  from  the  original 
patent,37  or  where  a  disclaimer  is  sought  to  be  narrowed  by 
means  of  a  reissue,38  nor  where  the  claim  was  merely  for 
the  function  of  a  machine  to  do  what  had  previously  been 
done  by  hand.39 

§  221.  Many  courts  have  recognized  the  fact  that  pat- 
ents have  been  reissued  by  the  Commissioner  of  Patents 
in  some  cases  where  there  was  no  statutory  ground  there- 
for; that  is  to  say,  in  some  cases  where  the  patents  surren- 
dered were  neither  invalid  nor  inoperative;  or  if  invalid 
or  inoperative,  were  not  so  by  reason  of  a  defective  or 
insufficient  specification;  or  if  invalid  or  inoperative  by 
reason  of  a  defective  or  insufficient  specification,  were  not 
so  because  of  inadvertence,  accident,  or  mistake.    It  is, 

33  American  Shoe-tip  Go.  v.  35  Yale  Lock  Co.  v.  Berkshire 
Protector  Go.,  2  Bann.  &  Ard.     Bank,  135  U.  S.  379,  1890. 

551,  1877.  37  Dobson  v.  Lees,  137  U.  S.  265, 

34  Union  Paper  Bag  Mach.  Co.      1890. 

v.  Waterbury,  39  F.  R.  392,  1889;  38  Westinghouse  Electric  &  Mfg. 

Moneyweight  Scale  Co.  v.  Toledo  Co.  v.  Stanley  Electric  Mfg.  Co., 

Computing  Scale  Co.,  187  F.  R.  115  F.  R.  810,  1902;  Franklin  & 

826,  1911;  Grand  Rapids  Show  Co.  v.  Illinois  Moulding  Co.,  128 

Case  Co.  v.  Baker,  216  F.  R.  341,  F.  R.  48,  1904. 

1914.  39Penn  Electrical  Mfg.  Co.  v. 

35  Denton  v.  Commissioner  of  Gonroy,  185  F.  R.  511,  1911. 
Patents,  83  O.  G.  1347,  1898. 


CHAP.    IX.]  REISSUES  291 

however,  still  an  unsettled  question,  whether  the  decision 
of  the  Commissioner,  that  the  existence  of  the  statutory 
ground  for  a  reissue  exists  when  he  grants  a  reissue,  is 
conclusive;  or  is  a  subject  of  review  and  possible  reversal 
in  a  suit  for  infringement  of  a  reissue.  It  has  been  held 
in  so  far  as  the  findings  of  the  commissioner  are  based  on 
disputed  questions  of  fact  they  are  not  reviewable,  "but 
in  so  far  as  they  depend  upon  the  legal  interpretation  and 
effect  of  admittedly  genuine  documents  or  other  undis- 
puted evidence,  they  are  reviewable  in  court.  "40  Another 
court  states  that  it  is  proper  to  review  the  decision  of  the 
Patent  Office  as  to  matters  apparent  from  the  record,41 
which  includes  the  question  of  sameness  of  invention  if 
it  so  appears.42  In  the  first  two  editions  of  this  book, 
the  then  existing  deliverances  of  the  courts  upon  this 
subject,  were  marshalled  and  explained  on  the  sides  of  the 
question  which  they  respectively  support;  because  in  the 
years  of  those  editions,  the  question  was  one  of  practical 
importance.  But  the  decision  of  the  Supreme  Court  in 
Miller  v.  Brass  Co.,  which  was  made  early  in  1882,  on 
another  part  of  the  law  of  reissues,  operated  so  strongly 
to  discourage  patentees  from  surrendering  their  original 
patents  and  applying  for  reissues  thereof,  that  only  forty- 
two  hundred  reissues  have  been  granted  during  the 
thirty-five  years  which  have  passed  since  then;  though 
nearly  one  million  original  patents  have  been  issued  dur- 
ing that  time.  And  the  few  hundred  reissues  which  have 
not  now  expired,  were  granted  with  more  circumspection 
than  was  formerly  exercised  in  the  Patent  Office,  in  such 

40  General  Electric  Co.  v.  Rich-  Wayne  Mfg.  Co.  v.  Coffield  Motor 
mond  Street  &  Ry.  Co.,  178  F.  R.  Washer  Co.,  227  F.  R.  987,  1915. 
84,  1909.  «  Wayne  Mfg.  Co.  v.  Coffield 

41  Grand  Rapids  Show  Case  Co.  Motor  Washer  Co.,  227  F.  R. 
v.  Baker,  216  F.  R.  341,   1914;  987,  1915. 


292 


IlKISSl'KS 


[chap.  IX. 


cases;  so  that  the  question  whether  the  courts  have  any 
authority  to  review  the  decision  of  the  Commissioner  of 
Patents,  that  some  statutory  ground  exists  therefor,  when 
he  grants  a  reissue,  is  a  question  of  much  diminished  im- 
port. If  any  lawyers  have  occasion  to  argue,  or  any 
judges  have  occasion  to  decide,  that  question  hereafter, 
they  may  consult  the  principal  cases  which  support  the 
negative,43  and  the  principal  cases  which  support  the 
affirmative  of  the  issue.44 


43  Philadelphia  <fc  Trenton  Kail- 
road  Co.  v.  Stimpson,  14  Peters, 
448,  1840;  Stimpson  v.  Railroad 
Co.,  4  Howard,  404,  1846;  Sey- 
mour v.  Osborne,  11  Wallace,  516, 
1870;  Collar  Co.  v.  Van  Dusen,  23 
Wallace,  558,  1874;  Ball  v.  Lan- 
gles,  102  U.  S.  129,  1880;  Topliff 
v.  Topliff,  145  U.  S.  171,  1892; 
Smith  v.  Merriam,  6  F.  R.  713, 
1881;  Selden  v.  Gas  Burner  Co., 
9  F.  R.  390,  1881;  Peoria  Target 
Co.  v.  Cleveland  Target  Co.,  58 
F.  R.  239,  1893;  Beach  v.  Ameri- 
can Box  Machine  Co.,  63  F.  R. 
603,  1894;  American  Sulphite 
Pulp  Co.  v.  Howland  Falls  Pulp 
Co.,  70  F.  R.  991,  1895;  Beach  v. 
Hobbs,  82  F.  R.  925,  1897;  Justi 
v.  Clark,  108  F.  R.  667,  1901; 
Asbestos  Shingle,  etc.,  Co.  v. 
H.  W.  Johns-Manville  Co.,  184 
F.  R.  620,  1910;  John  Kitchen, 
Jr.,  Co.  v.  Levison,  188  F.  R.  658, 
1911. 

44  Burr  v.  Duryee,  1  Wallace, 
571,  1863;  Rubber  Co.  v.  Good- 
year, 9  Wallace,  795,  1869;  James 
v.  Campbell,  104  U.  S.  371,  1881; 


Malm  v.  Harwood,  112  U.  S.  359, 
1884;  Coon  v.  Wilson,  113  U.  S. 
277,  1884;  Yale  Lock  Co.  v.  Berk- 
shire Bank,  135  U.  S.  378,  1890; 
Dobson  v.  Lees,  137  U.  S.  265, 
1890;  Electric  Gas  Co.  v.  Boston 
Electric  Co.,  139  U.  S.  502,  1891; 
Huber  v.  Nelson  Mfg.  Co.,  148 
U.  S.  290,  1893;  Olin  v.  Timken, 
155  U.  S.  148,  1894;  Eby  v.  King, 
158  U.  S.  371,  1895;  Whitely  v. 
Swayne,  4  Fisher,  123,  1865; 
Wicks  v.  Stevens,  2  Bann.  &  Ard. 
318,  1876;  Odell  v.  Stout,  22  F.  R. 
161,  1885;  Peoria  Target  Co.  v. 
Cleveland  Target  Co.,  47  F.  R. 
737,  1891;  Featherstone  v.  Cycle 
Co.,  57  F.  R.  635,  1893;  Idealite 
Co.  v.  Protection  Light  Co.,  103 
F.  R.  973,  1900;  Westinghouse 
Electric  &  Mfg.  Co.  v.  Stanley 
Electric  Mfg.  Co.,  115  F.  R.  810, 
1902;  S.  Franklin  &  Co.  v.  Illinois 
Moulding  Co.,  138  F.  R.  58, 
1905;  McDowell  v.  Ideal  Concrete 
Machine  Co.,  187  F.  R.  814, 
1911;  Moneyweight  Scale  Co.  v. 
Toledo  Computing  Scale  Co., 
187  F.  R.  826,  1911. 


CHAP.    IX.]  REISSUES  293 

§  226.  Miller  v.  Brass  Co.45  is  a  celebrated  case,  which 
introduced  a  new  doctrine  into  the  patent  laws  of  the 
United  States.  That  doctrine  is  precisely  this.  The 
right  to  obtain  a  broadened  reissue,  is  lost  by  a  lapse  of 
some  time,  after  the  date  of  the  original,  and  before  the 
application  for  that  reissue.  If  that  doctrine  has  any  pro- 
totype in  any  prior  deliverance  of  any  United  States 
judge,  that  prototype  must  be  found  in  a  charge  which 
Chief  Justice  Taney  delivered  to  a  jury  somewhat  early 
in  his  judicial  career.46  In  that  case,  the  third  paragraph 
of  his  Honor's  instruction  was  as  follows:  "The  plaintiff, 
at  the  time  of  his  application  for  the  patent  of  1834,  had 
a  right  to  surrender  the  patent  of  1829,  and  take  out  a 
corrected  one,  if  the  said  patent  was  invalid,  either  by 
reason  of  the  defective  description  of  the  improvement 
or  by  reason  of  his  having  claimed  as  new,  more  than  he 
was  entitled  to;  provided,  the  error  had  arisen  from  in- 
advertence or  mistake,  and  the  plaintiff  proceeded  to 
correct  it  within  a  reasonable  time  after  it  was  discovered." 
The  last  proviso  of  this  instruction  differs  from  the  doc- 
trine of  Miller  v.  Brass  Co.,  in  that  the  latter  makes  the 
fatal  lapse  of  time  to  begin  at  the  date  of  the  original  pat- 
ent, whereas  the  former  makes  it  begin  when  the  fault  of 
the  original  patent  is  discovered.  This  difference  is  a 
substantial  one;  because  reissuable  faults  in  letters  patent 
are  often,  and  perhaps  generally,  of  such  a  character  that 
they  can  be  detected  only  by  persons  learned  in  the  patent 
law;  and  because  a  patentee  may  honestly  keep  his  patent 
by  him  for  years,  without  subjecting  it  to  professional 
scrutiny.  The  doctrine  of  Miller  v.  Brass  Co.  must  there- 
fore find  its  foundation  and  genesis  elsewhere  than  in  the 

45  Miller  v.  Brass  Co.,  104  U.  S.  «  Knight     v.      Railroad     Co., 

350,  1882.  Taney's  Circuit  Court  Decisions, 

107,  1840. 


294  REISSUES  [chap.   IX. 

opinion  of  Chief  Jnsi  ice  T.wky  ;  and  elsewhere  I  ban  in  anj 
United  States  decision  made  and  reported  before  thai 
doctrine  was  promulgated  in  that  case  in  January,  1882. 

But  that  doctrine  has  been  emphatically  reaffirmed  by 
the  Supreme  Court  in  the  use  of  the  following  language: 
"We  deem  it  proper  to  say,  once  for  all,  that  the  views 
announced  in  Miller  v.  Brass  Co.,  on  the  subject  of  reissu- 
ing patents  for  the  purpose  of  extending  and  enlarging 
the  claim,  were  deliberately  expressed  and  are  still  adhered 
to."47 

The  Supreme  Court  has  also  decided  and  announced 
that  the  rule  in  Miller  v.  Brass  Co.  is  not  qualified  by  any 
question  relevant  to  the  presence  or  absence  of  interven- 
ing rights  of  other  inventors,  accruing  between  the  date 
of  the  original  patent,  and  the  date  of  the  application  for 
a  reissue  thereof;  18  for  "it  is  not  alone  those  persons  who 
are  shown  to  have  taken  action  upon  the  faith  that  the 
patent  defines  the  character  of  the  invention  who  may 
raise  the  objection  to  a  change  in  its  claims  which  makes 
it  cover  other  ground  than  that  claimed  before."48'1 
And  that  court  has  also  held  that  the  operation  of  the  rule 
is  not  ousted  by  the  fact  that  the  invention  sought  to  be 
covered  by  a  broadened  reissue,  had,  during  the  preceding 
life  of  the  original  patent,  been  apparently,  though  erro- 
neously, secured  to  the  same  patentee,  in  another  patent.49 

§  227.  The  length  to  which  delay  must  be  drawn  out, 
in  order  to  lose  the  right  to  apply  for  a  broadened  reissue, 
cannot  be  fixed  and  laid  down  for  all  cases.  Where  the 
specification  is  complicated,  and  the  claim  is  ambiguous 

47  Mahn  v.  Harwood,  1 12  U.  S.  Thomson-Houston  Electric  Co., 
358,  1884.  148  F.  R.  843,  1906. 

48  White  v.  Dunbar,  119  U.  S.  49  Hartshorn  v.  Barrel  Co.,  119 
52,  1886.  U.  S.  674,  1886. 

4sa  Milloy     Electric      Co.      v. 


CHAP.    IX.]  REISSUES  295 

or  involved,  the  patentee  may  be  entitled  to  greater  in- 
dulgence than  he  would  be  if  the  case  were  simpler  or 
clearer;  and  the  courts  will  always  exercise  a  proper 
liberality  on  this  point  in  favor  of  patentees.50  In  Miller 
v.  Brass  Co.  itself,  the  delay  continued  for  fifteen  years. 
In  three  later  Supreme  Court  cases,  the  delay  was  for 
fifteen,  fourteen,  and  thirteen  years,  respectively.51  In 
still  later  Supreme  Court  cases  much  shorter  delays  have 
been  held  to  be  fatal  to  broadened  reissues; 52  and  indeed, 
in  one  simple  case  where  adverse  rights  had  intervened, 
a  delay  of  ninety-seven  days  was  decided  to  have  a  fatal 
effect  on  such  a  reissue.53  The  general  rule  is  that  a  delay 
for  two  years  or  more  invalidates  a  broadened  reissue, 
unless  that  delay  is  accounted  for  and  excused  by  special 
circumstances.54  What  special  circumstances  will  have 
that  effect,  cannot  now  be  stated,  because  none  such  have 
yet  been  found  by  the  Supreme  Court  to  have  that  opera- 
tion, and  because  one  case  in  which  a  Circuit  Court  sus- 
tained so  late  a  broadened  reissue,55  on  account  of  such 
circumstances,  was  disapproved  in  the  Supreme  Court.56 
In  a  later  case  a  delay  of  nearly  three  years  was  excused ; 
because  the  inventor  was  in  poor  health,  and  at  times  men- 
tally deranged,  and  once  wholly  insane,  during  the  delay.57 

50Mahn  v.  Harwood,  112  U.  S.  54  Wollensak  v.  Reiher,  115  U. 

361,  1884.  S.   101,   1884;  Hoskin  v.  Fisher, 

"  Johnson  v.  Railroad  Co.,  105  125  U.  S.  222,   1887;  Topliff  v. 

U.  S.  539,  1881;  Mathews  v.  Ma-  Topliff,    145    U.    S.    171,    1892; 

chine  Co.,   105  U.  S.  54,   1881;  Franklin     &     Co.     v.      Illinois 

Bantz  v.  Frantz,  105  U.  S.  160,  Moulding    Co.,    128    F.    R.    48, 

1881.  1904. 

52  Leggett  v.  Standard  Oil  Co.,  B6  Hartshorn  v.  Roller  Co.,  18 
149  U.  S.  292,  1893;  Dunham  v.  F.  R.  92,  1883. 

Dennison  Mfg.  Co.,  154  U.  S.  110,  56  Hartshorn  v.  Barrel  Co.,  119 

1894.  U.  S.  674,  1886. 

53  Coon  v.  Wilson,   113  U.   S.  57  Whitcomb   v.   Coal   Co.,   47 
277,  1884.  F.  R.  658,  1891. 


296  REISSUES  [chap.  tx. 

But  the  reception  of  erroneous  advice  from  a  solicitor  of 

patents,  not  to  apply  for  a  particular  reissue,  is  no  excuse 
for  waiting  a  long  time,  and  then  doing  so.58  A  delay  of 
less  than  two  years  is  enough  to  defeat  a  broadened  re- 
issue in  a  plain  case,  even  in  the  absence  of  intervening 
rights; r'9  and  in  such  a  case,  six  months  is  probably  as  long 
a  delay  as  can  be  excused,60  though  seven  months'  delay 
was  excused  in  one  peculiar  case.61 

A  decision  even  on  an  appeal  from  an  order  granting 
or  denying  a  preliminary  injunction  to  the  effect  that 
two  patents  are  for  the  same  invention  and  that  there  is 
therefore  a  case  of  double  patenting  makes  it  urgent  on 
the  later  patentee  to  take  immediate  steps  to  procure  a 
reissue.62 

§  229.  The  statutory  provision  which  makes  a  patent- 
void,  if  the  invention  it  covers  was  in  public  use  or  on  sale 
more  than  two  years  before  that  patent  was  applied  for, 
is  a  matter  which  does  not  apply  to  reissue  patents,  and 
the  applications  therefor.63  The  reissue  application  is 
considered  as  appended  to  the  original  application,64  and 
the  two  years  cease  to  run  with  the  filing  of  the  latter. 

§  230.  A  surrender  of  a  patent,  when  made  with  an  ap- 
plication for  a  reissue,  need  not  be  made  in  writing;  and 
therefore  the  statement  in  a  reissue  that  it  is  a  reissue  of  a 

58  Wollensak    v.    Sargent,    151  61  Crown  Cork  &  Seal  Co.   v. 

U.  S.  227,  1894.  Aluminum  Stopper  Co.,   108  F. 

™  Farmers'  Mfg.  Co.  v.  Corn-  R.  852,  1901. 

Planter  Co.,  128  U.  S.  506,  1888;  e-  Thomson-Houston      Electric 

New  v.  Warren,  22  0.  G.  588,  Co.  v.  Western  Electric  Co.,  158 

1882;  Haines  v.  Peck,  26  F.  R.  F.  R.  813,  1907. 

625,  1884;  Union  Paper  Bag  Ma-  83  Shaw  v.  Lead  Co.,  11  F.  R. 

chine  Co.  v.  Waterbury,  39  F.  R.  714,  1882. 

391,  1891.  64  Grant  v.  Raymond,  6  Peters, 

»  McArthur  v.  Supply  Co.,  19  218,  1832. 
F.  R.  263,  1884. 


CHAP.    IX.]  REISSUES  297 

surrendered  former  reissue,  is  not  negatived  by  the  pro- 
duction of  a  document  purporting  to  be  a  surrender  of  the 
original  patent,  and  apparently  intended  to  have  been  a 
surrender  of  the  former  reissue.65  The  presumption  that 
the  proper  patent  was  surrendered,  by  parol  if  not  other- 
wise, is  not  negatived  by  proof  of  an  ineffectual  attempt 
to  surrender,  it  in  writing. 

§  231.  Patents  surrendered  prior  to  July  8,  1870,  were 
thereby  canceled  in  law,  whether  a  reissue  was  granted 
thereon  or  not.66  Patents  surrendered  since  July  8,  1870, 
were  also  canceled  thereby  if  reissues  were  granted  thereon, 
but  not  otherwise.67  But  a  surrendered  patent  cannot  be 
enforced  while  the  application  for  a  reissue  is  pending.68 
After  an  application  for  a  reissue  has  been  rejected  or 
withdrawn,  the  original  patent  stands  unaffected  by  any- 
thing that  occurred  in  the  Patent  Office  while  the  appli- 
cation for  the  reissue  was  pending  there.60 

No  damages  or  profits  can  ordinarily  be  recovered,  for 
any  infringement  of  a  surrendered  patent  committed  prior 
to  its  cancellation,  by  means  of  any  judgment  or  decree 
entered  after  that  time;  but  money  recovered  or  volun- 
tarily paid,  on  account  of  such  infringement,  prior  to  such 
cancellation,  cannot  be  recovered  back.70  Nor  will  any 
such  cancellation  have  any  effect  upon  any  unpaid  judg- 
ment or  decree  which  was  entered  before  that  cancel- 
lation took  effect.     The  right  of  the  patentee,  in  such 

65  Dental     Vulcanite     Co.     v.  68  Burrell  v.  Hackley,  35  F.  R. 

Wetherbee,  2  Cliff.  563,  1866.  833,    1888;    Coffield    v.    Fletcher 

«  Moffitt  v.  Garr,  1  Black,  273,  Mfg.  Co.,  167  F.  R.  321,  1909. 

1S61;  Peck  v.  Collins,  103  U.  S.  89McCormick  Machine  Co.  v. 

664,  1880.  Aultman,  169  U.  S.  606,  1898. 

67 16  Statutes  at  Large,  Ch.  132,  70  Moffitt  v.  Garr,  1  Black,  273, 

Section  53,  p.  206;  Revised  Stat-  1861;  Eby  v.  King,  158  U.  S.  373, 

utes,  Section  4916;  Allen  v.  Culp,  1895. 
166  U.  S.  505,  1897. 


298  REISSUES  [CHAP.    IX. 

a  case,  rests  upon  his  judgmenl  or  decree,  and  not  on  his 
patent.71 

The  only  exception  yet  established,  to  what  the  hist 
paragraph  slates  is  the  ordinary  rule  relevant  to  profits 
and  damages  which  accrued  from  the  infringement  of  a 
surrendered  patent  before  its  cancellation,  was  established 
in  a  case  where  the  defendant  infringer  was  himself  the 
patentee,  and  where  the  plaintiffs  were  his  equitable 
grantees,  as  to  that  part  of  the  territory  of  the  United 
States,  included  within  the  boundaries  of  Connecticut 
and  New  York.  In  that  case,  the  patentee  infringed  his 
grantees'  rights,  and  afterward  surrendered  and  reissued 
the  patents  involved.  The  Supreme  Court  decided  that 
the  defendant  held  his  patents,  all  the  time  in  trust  for  the 
plaintiffs,  to  the  extent  of  their  territory;  and  that  he  must 
therefore  account  to  them  for  the  profits  which  he  had 
made  from  the  use  of  the  trust  property,  within  that 
territory,  regardless  of  the  fact  that  he  had  surrendered 
and  reissued  those  patents,  after  making  a  part  of  those 
profits.72 

§  232.  A  reissue  patent  may  be  surrendered  and  again 
reissued,  under  the  same  circumstances  as  those  which 
make  an  original  patent  reissuable,73  and  the  last  reissue 
may  be  identical  with  the  original  patent.74  So  also,  a 
patent  might  be  reissued  during  its  extended  term,  as  well 
as  during  its  first  term,  when,  as  formerly,  extensions  of 
patents  were  provided  for  by  law.75    No  reissue  can  be 

71Mevs  v.  Conover,  125  U.  S.  Powder  Co.,  19  F.  R.  510,  1884; 

144,  1876.  Celluloid   Mfg.    Co.    v.    Zylonite 

"Littlefield  v.  Perry,  21  Wal-  Co.,  27  F.  R.  291,  1886;  Sawyer 

lace,  205,  1874.  Spindle   Co.   v.    Eureka   Spindle 

«  French  v.  Rogers,   1  Fisher,  Co.,  33  F.  R.  836,  1888. 
136,  1851;  Selden  v.  Gas  Burner  75  Wilson  v.  Rousseau,  4  How- 
Co.,  9  F.  R.  390,  1881.  ard,  646,  1846;  Gibson  v.  Harris,  1 

74  Giant  Powder  Co.  v.  Nitro  Blatch.  167,  1846. 


CHAP.    IX.]  REISSUES  29!) 

granted  of  a  patent  after  its  final  expiration;  even  where 
that  expiration  resulted  from  the  fact  that  the  same  in- 
vention had  been  patented  in  a  foreign  country  before  it 
was  patented  in  the  United  States;  and  from  the  fact  that 
the  foreign  patent  has  expired,  though  the  United  States 
patent  sought  to  be  reissued,  does  not  appear,  on  its  face, 
to  have  done  so.76 

§  233.  Only  "the  same  invention"  can  be  covered  by  a 
reissued  patent.77  This  quoted  phrase  occurs,  in  this 
relation,  in  all  the  relevant  statutory  provisions,  now  or 
heretofore  in  force  in  the  United  States.  But  not  any  of 
those  statutes  obviously  indicates  whether  the  phrase 
refers  to  whatever  invention  was  made  by  the  patentee, 
and  actually  described  in  his  original  application;  or  re- 
fers to  whatever  invention  was  substantially  suggested, 
indicated  or  described  in  the  patentee's  original  letters 
patent,  drawing  or  model;  or  refers  to  whatever  invention 
was  described  or  indicated  in  the  original  letters  patent 
or  drawing  of  the  patentee;  or  refers  to  whatever  inven- 
tion was  described  by  him  in  his  original  letters  pat- 
ent; or  refers  to  whatever  invention  was  actually  claimed 
by  the  inventor  in  his  original  patent;  or  refers  to 
whatever  invention  was  described  in  the  original  letters 
patent,  and  appears  therein  to  have  been  intended  to 
be  secured  thereby.  During  many  years,  debate  ranged 
in  the  courts  around  these  various  constructions;  and 
large  masses  of  obiter  dicta  and  some  actual  adjudica- 
tions can  be  collected  out  of  the  books,  in  favor  of  each 

76  C.  W.  Simons'  Appeal,  11  M'Dowell  v.  Ideal  Concrete  Ma- 
0.  G.  1107,  1877.  chine  Co.  (discussing  question  and 

77  Patent  Act  of  1832,  Section  3;  citing  authorities),  187  F.  R.  814, 
Patent  Act  of  1836,  Section  13;  1911;  Stafford  Co.  v.  Cold  well- 
Patent  Act  of  1870,  Section  53;  Gildard  Co.,  202  F.  R.  744, 
Revised  Statutes,  Section  4916;  1913. 


300  REISSUES  [chap.   IX. 

of  them.  Bui  the  Supreme  Court  put  a  period  to  the 
controversy  in  the  case  of  the  Parker  &  Whipple  Co. 
v.  the  Yale  Clock  Co.  decided  in  1887.78  That  deci- 
sion adopted  the  last  of  the  above  stated  constructions, 
and  thus  established  the  meaning  of  the  phrase  "the 
same  invention"  to  be  whatever  invention  was  de- 
scribed in  the  original  letters  patent,  and  appears  therein 
to  have  been  intended  to  be  secured  thereby.  This  rule 
has  already  been  repeatedly  reaffirmed  and  reapplied  by 
the  Supreme  Court,70  and  is  now  as  well  established  as  its 
companion  rule  in  Miller  v.  Brass  Co.  Therefore  no  re- 
issue claim  can  stand  any  longer  upon  a  model  alone,  nor 
even  alone  upon  a  drawing  of  an  original  patent;80  and 
indeed  neither  models,  drawings,  nor  descriptions,  nor  all 
of  them  together,  can  support  a  reissue  claim,  except 
where  the  description  in  the  original  letters  patent  shows 
that  the  invention  covered  by  that  claim  was  intended  to 
be  secured  in  the  original.81 

§  239.  The  last  clause  of  Section  4916  of  the  Revised 
Statutes  provides,  that  "where  there  is  neither  model  nor 
drawing,  amendments  may  be  made  upon  proof,  satisfac- 
tory to  the  Commissioner,  that  such  new  matter  or 
amendment  was  a  part  of  the  original  invention,  and  was 

78  Parker  &  Whipple  Co.  v.  Yale  81  Carpenter  Machine  Co.  v. 
Clock  Co.,  123  U.  S.  99,  1887.  Searle,  52  F.  R.  814,  1892;  Ide  v. 

79  Hoskin  v.  Fisher,  125  U.  S.  Trorlicht,  Duncker  &  Renard 
223,  1887;  Flower  v.  Detroit,  127  Carpet  Co.,  115  F.  R.  147,  1902; 
U.  S.  571,  1887;  Pattee  Plow  Co.  United  States  Whip  Co.  v.  Hassler, 
v.  Kingman  &  Co.,  129  U.  S.  294,  134  F.  R.  398,  1905;  Weston 
1889;  Freeman  v.  Asmus,  145  U.  S.  Electrical,  etc.,  Co.  v.  Stevens,  134 
240,  1895;  Corbin  Cabinet  Lock  F.  R.  574,  1904;  Stafford  Co.  v. 
Co.  v.  Eagle  Lock  Co.,  150  U.  S.  Coldwell-Gildard  Co.,  202  F.  R. 
42,  1893.  744,  1913;  Marvel  Buckle  Co.  v. 

80  Hailes  v.  Stove  Co.,  123  U.  S.  Alma  Mfg.  Co.,  180  F.  R.  1002, 
587,  1887.  1910. 


CHAP.    IX.]  REISSUES  303 

omitted  from  the  specification  by  inadvertence,  accident, 
or  mistake."  The  meaning  of  that  clause  is  not  per- 
fectly known ;  but  it  is  known  not  to  enlarge  the  power  of 
the  Commissioner,  in  reference  to  the  invention  for  which 
a  reissue  may  be  granted.82 

§  240.  The  provision,  first  enacted  in  1870,83  that  "no 
new  matter  shall  be  introduced  into  the  specification"  is 
merely  another  way  of  saying  that  a  reissued  patent  shall 
be  for  the  same  invention  as  the  original.84  That  pro- 
vision, therefore,  neither  enlarged  nor  restricted  the  re- 
issuability  of  letters  patent;  and,  accordingly,  it  is  not 
new  matter,  within  its  meaning,  to  state  a  new  use  of  the 
invention  shown  in  the  original;85  nor  to  explain,  in  a 
reissue,  the  operation  of  a  device  which  in  the  original 
was  only  described ; 86  nor  to  vary  the  description  of  any- 
thing described  in  the  original.87 

§  242.  Reissued  patents,  which  were  granted  on  the 
surrender  of  former  reissues,  must  be  able  to  endure  com- 
parison, on  the  point  of  identity  of  invention,  not  only 
with  the  original  letters  patent,  but  also  with  the  surren- 
dered reissues,  which  preceded  them.88 

§  243.  There  is  a  legal  presumption  that  the  neces- 
sary identity  of  invention  exists  in  all  reissued  pat- 
ents; and  that  presumption  controls  the  point,  unless 
the  contrary  is  shown  to  be  true.89      That  can  be  done 

82  Powder  Co.  v.  Powder  Works,  v.     Stewart,     18     Blatch.     561, 

98  U.  S.  128,  1878.  1881. 

83 16  Statutes  at  Large,  Ch.  230,  87  O'Reilly  o.  Morse,  15  Howard, 

Section  53,  p.  206.  62,  1853. 

84  Powder  Co.  v.  Powder  Works,  88  Knight     v.      Railroad     Co., 

98  U.  S.  138,  1878.  Taney's  Circuit  Court  Decisions, 

"Broadnax  v.  Transit  Co.,  5  106,1840. 

Bann.  &  Ard.  611,  1880.  S9  O'Reilly  v.  Morse,  15  Howard, 

88  Putnam     v.     Yerrington,     2  62,  1853;  Klein  r.  Russell,  19  Wal- 

Bann.  &  Ard.  243,   1876;  Potter  lace,  433,  1873. 


302  REISSUES  [CHAP.    IX. 

only  by  introducing  the  original  letters  patent  in  evi- 
dence.90 

§  244.  To  omit  from  a  reissue,  anything  which  the  orig- 
inal specification  stated  to  be  essential  to  the  invention,  is 
fatal  to  identity  of  invention.91  Indeed,  it  has  been  held 
in  one  case  that  the  omission  of  one  bolt  from  a  reissue 
patent  for  a  reaper  and  mower,  was  enough  to  negative 
identity  with  the  original,  because,  with  the  bolt,  the 
machine  was  a  reaper  only,  and  not  a  mower.92  A  process 
is  not  the  same  invention  as  a  machine  which  may  perform 
that  process;93  and  a  process  consisting  of  one  stage  is 
not  the  same  as  a  process  consisting  of  that  stage  and  one 
or  more  others.94  Where,  however,  an  original  patent 
described  and  claimed  several  different  inventions,  one  or 
more  of  those  inventions  may  be  omitted  from  the  claims 
of  a  reissue  of  that  patent.95  It  is  necessary  to  the  requi- 
site identity  of  invention,  that  the  reissue  should  claim  no 
invention  not  described  and  intended  to  be  claimed  in  the 
original;  but  it  is  not  necessary  to  that  identity,  that  the 
original  should  describe  or  claim  no  invention  not  de- 
scribed or  claimed  in  the  reissue. 

§  245.  A  sub-combination  may  be  claimed  in  a  reissue, 
if  it  was  shown  in  the  original  as  performing  the  same 
function;  even  though  it  was  claimed  in  the  original  only 
as  a  part  of  a  larger  combination.96    But  a  sub-combina- 

90  Seymour  v.  Osborne,  11  Wal-  94  Wood-Paper  Patent,  23  Wal- 
lace, 516,  1870.  lace,  599,  1874. 

91  Gill  v.  Wells,  22  Wallace,  1,  95  Rubber  Co.  v.  Goodyear,  9 
1874;  Russell  v.  Dodge,  93  U.  S.  Wallace,  788,  1869. 

460,    1876;   Atwood   v.   Portland  98  Battin  v.  Taggert,  17  Howard, 

Co.,  10  F.  R.  286,  1880.  74,  1854;  Corn-Planter  Patent,  23 

92  Kirby  v.  Mfg.  Co.,  10  Blatch.  Wallace,  181, 1874;  Jordan  v.  Dob- 
307,  1872.  son,  4  Fisher,  232,  1870;  Pearl  v. 

93  Eachus  v.  Broomall,  115  U.  S.  Ocean  Mills,  2  Bann.  &  Ard.  469, 
436,  1885.  1877;  Herring  v.  Nelson,  3  Bann. 


CHAP.    IX. J  REISSUES  303 

tion  cannot  be  legally  claimed  in  a  reissue,  if  it  is  there 
shown  to  perform  a  substantially  different  function  from 
any  which  it  could  perform  in  its  original  environment.97 
In  the  former  case,  the  invention,  consisting  of  the  sub- 
combination, existed  in  the  original  specification.  In 
the  latter  case,  the  sub-combination  may  have  existed  in 
the  original,  but  it  did  not  compose,  in  that  place,  the 
same  invention  which  it  constitutes  in  the  reissue. 

§  246.  A  single  device  may  also  be  made  the  subject  of 
a  separate  claim  in  a  reissue,  though  in  the  original  it  was 
claimed  only  in  combination  with  other  devices;  provided 
that  device  was  a  new  and  useful  invention  of  the  patentee, 
and  might  have  been  separately  claimed  by  him  in  the 
original  patent,  and  appears  therein  to  have  been  intended 
to  be  secured  thereby.98 

§  247.  Whether  a  patentee,  in  effecting  a  reissue,  may 
describe  an  equivalent  of  one  of  the  elements  of  the  origi- 
nally patented  combination,  and  may  claim  the  combina- 
tion broadly  enough  to  cover  that  equivalent,  is  a  ques- 
tion which  depends  upon  the  effect,  in  particular  cases,  of 
the  application  of  the  rule  in  Miller  v.  Brass  Co.  Where 
such  a  reissue  is  applied  for  promptly  after  the  granting  of 
the  original  patent,  it  may  be  sustained;99  but  the  right 
to  obtain  such  a  reissue,  is  lost  by  long  lapse  of  time  after 
the  date  of  the  original,  and  before  the  application  for  that 
reissue.100 

&  Ard.  55,  1877;  Kerosene  Lamp  98  Parker  &  Whipple  Co.  v.  Yale 

Heater  Co.  v.  Littell,  3  Bann.  &  Clock  Co.,  123  U.  S.  87, 1887;  Gal- 

Ard.  312,  1878;  Turrell  v.  Spaeth,  lahue  v.  Butterfield,   10  Blatch. 

3  Bann.  &  Ard.  461,  1878;  Odell  v.  237,  1872. 

Stout,  22  F.  R.  163,  1884;  Jen-  "  McArthur  v.  Supply  Co.,  19 

kins  v.  Stetson,  32  F.  R.  398, 1887.  F.  R.  263,  1884. 

97  Gill  v.  Wells,  22  Wallace,  24,  10°  White  v.  Dunbar,  119  U.  S. 

1874;  Johnson  v.  Railroad  Co.,  105  51 ,  1886. 
U.  S.  539,  1881. 


304  REISS1  ES  [chap.   IX. 

£  248.  Reissue  patents  are  nol  fco  be  held  void  for  want 
of  identity  with  the  originals,  where  a  liberal  const  ruction 
of  the  two  documents  can  avert  that  result.""  Courts  are 
accordingly  inclined,  where  claims  apparently  illegal  are 
inserted  in  reissue  patents,  to  modify  those  claims  by  con- 
struction, in  order  to  make  them  conform  to  propriety.102 
This  inclination  is  not,  however,  to  be  relied  upon,  in  a 
case  where  a  patent  was  surrendered  and  reissued  solely 
to  broaden  its  claim,  and  where  the  broadened  claim  is 
void  for  want  of  novelty,  as  well  as  for  want  of  identity 
with  the  original  invention.103  The  claims  of  the  reissued 
patent  will  be  given  the  due  effect  intended  and  expressed 
in  the  proceeding.104 

§  249.  Where  some,  but  not  all,  of  the  claims  of  a  re- 
issue patent  are  void  because  they  are  obnoxious  to  the 
doctrine  of  Miller  v.  Brass  Co.,  or  because  they  are  not  for 
the  same  invention  as  the  original;  that  fact  does  not 
vitiate  the  other  claims  of  that  patent.  The  reissue  will, 
in  either  of  those  cases,  have  whatever  validity  it  would 
have  had  if  it  had  not  contained  the  invalid  claims,  pro- 
vided there  is  no  unreasonable  delay  to  file  a  proper  dis- 
claimer of  them.105 

§  250.  Executors,  administrators,  or  assigns  have  the 

101  Milligan  &  Higgins  Glue  Co.  640,  1882;  Gould  v.  Spicer,  15 
v.  Upton,  1  Bann.  &  Ard.  505,  F.  R.  344,  1882;  Cote  v.  Moffitt, 
1874.  15  F.  R.  345,  1882;  Schillinger  v. 

102  Mfg.  Co.  v.  Ladd,  102  U.  S.  Brewing  Co.,  24  0.  G.  495,  1883; 
412, 1880;Brainard#.  Cramme,  12  National  Pump  Cylinder  Co.  v. 
F.  R.  624,  1882.  Gunnison,   17  F.   R.  812,   1883; 

103  Wisner  v.  Grant,  7  F.  R.  922,  Havemeyer  v.  Randall,  21  F.  R, 
1880.  405,    1884;    International    Terra 

104  Thomson-Houston  Electric  Cotta  Co.  v.  Maurer,  44  F.  R. 
Co.  v.  Black  River  Traction  Co.,  622,  1890;  Rawson  &  Morrison 
135  F.  R.  759,  1905.  Mfg.  Co.  v.  C.  W.  Hunt  Co.,  147 

105  Gage  v.  Herring,  107  U.  S.  F.  R.  239,  1906. 


CHAP.    IX. J  REISSUES  305 

same  right  to  surrender  and  reissue  a  patent,  that  the 
patentee  himself  has;  10G  except  that  the  application  must 
be  made,  and  the  new  specification  be  signed,  by  the  in- 
ventor himself  if  living,107  and  sane.108  The  title  to  the  re- 
issued patent  will,  in  such  a  case,  vest  at  once  in  the  as- 
signee, by  operation  of  the  assignment  of  the  original 
patent,  and  without  the  execution  of  any  new  document.109 

§  251.  Where  several  executors  are  appointed  in  a  will, 
but  only  one  of  them  receives  letters  testamentary,  a 
patent  of  the  testator  may  be  lawfully  reissued  to  that 
executor,  and  the  legal  title  to  the  reissued  patent  will 
thereupon  vest  exclusively  in  him.110  A  grant  of  a  re- 
issue to  a  person  as  administrator,  is  conclusive  evidence 
in  an  infringement  suit  that  the  person  was  in  fact  ad- 
ministrator; m  and  the  same  rule  doubtless  applies  as 
well  to  executors.  A  reissue  to  a  person  in  trust  for  the 
heirs  at  law  of  the  patentee,  will  confer  the  legal  title  to 
the  reissue  upon  that  person,  and  the  equitable  title  upon 
the  persons  beneficially  interested,  whoever  they  may 
be.112 

§  252.  An  assignee  of  a  patent  is  a  person  to  whom  the 
entire  legal  interest,  or  an  undivided  part  of  the  entire 
legal  interest,  in  a  patent  has  been  duly  assigned  by  an 
instrument  in  writing.    A  grantee  differs  from  an  assignee 

108  Revised  Statutes,  Section  no  Rubber  Co.  v.  Goodyear,  9 
4916.                                                   Wallace,  788,  1869. 

107  Revised    Statutes,     Section  in  Woodworth  v.  Hall,  1  Wood- 

4895.  bury  &  Minot,  248,  389,   1846; 

los  Whitcomb  v.  Coal  Co.,  47  Goodyear  v.  Hullihen,  3  Fisher, 

F.  R.  659,  1891.  251,  1867. 

109  Woodworth  v.  Hall,  1  Wood-  112  Woodworth  v.  Stone,  3 
bury  &  Minot,  248,  389,  1846;  Story,  752,  1845;  Northwestern 
McBurney  v.  Goodyear,  11  Cush-  Fire  Extinguisher  Co.  v.  Phil- 
ing  (Mass.),  569,  1853.  adelphia   Fire  Extinguisher  Co., 

1  Bann.  &  Ard.  177,  1874. 


306  REISSUES  [('HAP.    IX. 

in  that  the  rights  conveyed  to  him  are  confined  to  a  part  or 
to  parts  of  the  territory  of  the  United  States.  A  licensee  is 
one  who  receives  cither  an  exclusive  or  a  concurrent  right 
to  make  or  to  use  or  to  sell  the  thing  covered  by  the 
patent.118  A  reissue  may  be  granted  to  an  assignee  of  the 
executor  or  administrator  of  the  patentee; 114  or  to  an 
assignee  of  an  assignee; 115  or  indeed  to  an  assignee  of 
any  degree,  however  far  removed  from  the  original  pat- 
entee by  mesne  assignments; 116  and  if  the  reissued  patent 
recites  those  assignments,  it  becomes  at  least  prima  facie 
evidence  thereof,  in  an  infringement  suit.117  If  a  patent 
is  owned  jointly  by  two  or  more  patentees,  or  by  two  or 
more  assignees,  or  by  one  or  more  patentees  and  one  or 
more  assignees,  all  the  owners  must  join  in  a  reissue,  or 
must  ratify  it,  or  it  will  be  void;  but  neither  grantees  nor 
licensees  are  required  to  do  either.118  The  right  of  a 
patentee  or  assignee  to  receive  a  reissue  is  not  affected 
by  his  having  made  grants,  or  issued  licenses  under  his 
patent;  119  but  where  a  patentee  grants  away  his  rights 
in  a  part  of  the  territory  of  the  United  States,  and  after- 
ward conveys  the  residue  to  another  vendee,  it  is  doubt- 
ful whether  that  vendee  is  entitled  to  apply  for  a  re- 
issue.120 

§  253.  Grantees   may   continue   to   hold   their  rights 
under  an  original  patent  after  it  is  surrendered  and  re- 

113  Sections  274,  287,  and  296  of  heins  v.  Brandt,  3  Fisher,  218, 
this  book.  1867. 

114  Carew    v.    Fabric    Co.,     1  118  Potter  v.  Holland,  4  Blatch. 
Holmes,  45,  1871.  206,  1858;  Forbes  v.  Stove  Co.,  2 

115  Swift  v.  Whisen,  2  Bond,  115,  Cliff.  379,  1864;  Meyer  v.  Bailey, 
1867.  2  Bann.  &  Ard.  73,  1875. 

116  Selden  v.  Gas  Burner  Co.,  9  119  Smith   v.   Mercer,   3   Penn. 
F.  R.  390,  1881.  L.  J.  Reports,  529,  1846. 

117  Middletown    Tool    Co.     v.  120  Commissioner  of  Patents  v. 
Judd,  3  Fisher,  141,  1868;  Hoff-  Whiteley,  4  Wallace,  522,  1866. 


CHAP.    IX. j  REISSUES  307 

issued  by  the  patentee  or  assignee;  or  they  may  take  cor- 
responding rights  under  the  reissued  patent.  They  have 
their  choice  between  the  two.121  It  follows  from  this 
rule,  that  in  theory  at  least,  a  given  invention  may  be  the 
subject  of  letters  patent  in  one  part  of  the  United  States, 
at  the  same  time  that  it  is  free  to  the  public  in  other  parts 
of  the  country.  If  this  were  a  practical  result,  it  would 
be  highly  unjust,  because  it  would  operate  to  prohibit 
given  manufactures  in  one  State,  while  in  another  State 
the  same  pursuits  would  be  free  to  all.  In  fact,  however, 
patentees  or  assignees  seldom  surrender  any  claims  which 
it  is  worth  while  for  any  interested  person  to  retain;  and, 
on  the  other  hand,  grantees  are  generally  ready  to  ratify 
and  adopt  broadened  reissues.  It  may  hereafter  happen, 
that  in  order  to  retain  his  rights  of  action  for  accrued 
damages  or  profits,  or  in  order  to  avoid  the  risk  of  ex- 
changing a  valid  original  patent  for  a  reissue  patent  of 
uncertain  validity,  now  and  then  a  grantee  will  elect  to 
continue  to  hold  under  the  original,  while  the  patentee 
holds  under  a  reissue  patent.  If  such  cases  become 
numerous  and  important,  they  will  probably  lead  to  a 
change  in  the  statute.  The  remedy  would  be  to  enact 
that,  in  such  cases,  all  the  assignees  and  grantees  must 
join  in  the  surrender,  in  order  to  authorize  a  reissue. 

§  254.  The  legal  effect  of  a  valid  reissue  patent  has 
always  been  the  same  under  the  different  statutes  which 
have,  from  time  to  time,  been  in  force.  The  provision  of 
the  Revised  Statutes  upon  the  subject  is  as  follows: 
"Every  patent  so  reissued,  together  with  the  corrected 
specification,  shall  have  the  same  effect  and  operation  in 
law,  on  the  trial  of  all  actions  for  causes  thereafter  aris- 

121  Washburn     V     Gould,      3      v.     Holland,     4      Blatch.      206, 
Story,  122,   1844;  Woodworth  v.      1858. 
Stone,  3  Story,  749,  1856;  Potter 


308  HKISSUES  [chap.   IX. 

ing,  as  if  tin*  same  had  been  originally  filed  in  such  cor- 
rected form."  122 

It  follows  from  this  provision,  that  a  reissued  patent 
cannot  be  affected,  in  point  of  novelty,  by  anything  done 
after  the  date  of  the  original  application.  Novelty  still 
dates  from  the  original  invention.123  Nor  will  any  in- 
vention produced  after  that  time,  be  taken  into  account 
as  showing  the  state  of  the  art,  and  therefore  as  being 
relevant  to  the  question  of  construction  of  a  reissued 
patent.124  On  the  other  hand,  when  reissued  patents  are 
introduced  in  evidence  to  negative  the  novelty  or  limit 
the  scope  of  other  patents,  they  operate  as  of  their  own 
dates,  and  not  as  of  the  dates  of  the  originals.125 

It  also  follows  from  said  statutory  law,  that  persons  who 
use  or  sell,  after  the  date  of  a  reissued  patent,  specimens  of 
the  thing  covered  by  it,  are  liable  as  infringers;  even  though 
those  persons  made  or  bought,  or  used  those  specimens  be- 
fore that  date,  and  when,  on  account  of  the  omission  to 
cover  them  by  the  original  patent,  they  had  a  legal  right 
to  appropriate  the  invention.126 

122  Revised  Statutes,  Section  126  Stimpson  v.  Railroad  Co.,  4 
4916.  Howard,  380,  1846;  Agawam  Co. 

123  Grant  v.  Raymond,  6  Peters,  v.  Jordan,  7  Wallace,  609,  1868; 
218,  1832.  Carr  v.  Rice,  1  Fisher,  211,  1856; 

124  Carroll  v.  Morse,  9  0.  G.  Bliss  v.  Brooklyn,  8  Blatch.  534, 
453,  1876.  1871 ;    Coffield    Motor    Washer 

125  United  States  Stamping  Co.  Co.  v.  A.  D.  Howe  Co.,  172  F.  R. 
v.  King,  17  Blatch.  64,  1879.  668,  1909. 


CHAPTER    X 


EXTENSIONS 


255.  Constitutional  foundation  of 

extensions. 

256.  Congressional  extensions.  21)5. 

257.  Mode  of  Congressional  ex- 

tension. 260. 

258.  Effect  of  Congressional  ex- 

tensions. 267. 

259.  Patent  Office  extensions. 

260.  Statutory  foundation  of  Pat-      268. 

ent  Office  extensions. 

261.  Who  might  apply  for  Patent      269. 

Office  extensions. 

262.  Points  of  time  whereon  Pat- 

ent Office  extensions  were     270. 
grantable. 

263.  Patent      Office      extension 

might  be  granted  to  an 
inventor-patentee,  even  if 
he  had  parted  with  all 
interest  in  the  first  term 
of  his  patent.  271. 

264.  Patent      Office      extensions 

grantable  only  where  in- 
ventors would  possess,  or 


at  least  participate  in, 
the  benefit  thereof. 

Patent  Office  extension,  how 
effectuated. 

Force  of  the  Commissioner's 
decision  in  extension  cases. 

Facts  winch  justified  exten- 
sions. 

Proceedings  preliminary  to 
extensions. 

Remedy  for  fraud  in  procur- 
ing or  in  granting  exten- 
sions. 

"The  benefit  of  the  exten- 
sion of  a  patent  shall  ex- 
tend to  the  assignees  and 
grantees  of  the  right  to  use 
the  thing  patented,  to  the 
extent  of  their  interest 
therein." 

Adjudged  meaning  of  the 
statute  quoted  in  the  last 
section. 


§  255.  The  constitutional  provision  relevant  to  the 
duration  of  patent  rights,  is  that  such  rights,  when  granted, 
shall  be  granted  for  limited  times.1  The  Patent  Act  of 
1790  2  provided,  that  under  the  circumstances  and  con- 
ditions prescribed  therein,  the  Secretary  of  State,  and  the 

1  Constitution    of    the    United  - 1   Statutes  at  Large,  Ch.   7, 

States,  Article  I,  Section  8.  Section  1,  p.  109. 

309 


310  EXTENSIONS  [CHAP.    x. 

Secretary  of  War,  and  the  Attorney  General,  or  any  two 
of  them,  might  issue  letters  patent  for  an  invention,  for 
any  term  not  exceeding  fourteen  years.  The  same  pro- 
vision was  made  in  the  Patent  Act  of  1793. 3  Under  that 
law,  patents  were  generally,  if  not  universally,  granted 
for  the  full  fourteen  years;  but  whether  so  granted  or  not, 
there  was,  prior  to  1832,  no  mention  in  the  statutes  of  any 
way  in  which  any  patent,  once  granted,  could  be  extended, 
and  its  duration  thus  prolonged.  In  July  of  the  last- 
mentioned  year,  it  was  enacted:  "That  application  to 
Congress  to  prolong  or  renew  the  term  of  a  patent,  shall 
be  made  before  its  expiration."  '  The  same  section  also 
provided  a  method  of  proceeding,  to  be  followed  by  appli- 
cants in  such  cases.  The  entire  section  was,  however, 
merely  a  self-imposed  limitation  on  a  constitutional  power 
of  Congress;  and  it  was  repealed  by  the  Patent  Act  of 
July  4,  1836. 5  Since  that  date,  the  extending  of  patents 
by  Congress,  has  been  regulated  by  no  other  law  than  the 
Constitution. 

§  256.  Patents  may  be  extended  by  Congress  at  any 
time,  either  before  or  after  their  expiration.6  This  power 
was  exercised  as  early  as  1808.7  In  one  later  case  such  an 
extension  was  granted  nearly  three  years  before  the  then 
existing  exclusive  right  was  to  expire;8  and  in  another, 
more  than  twenty-one  years  intervened  between  the  ex- 
piration of  the  original  term  of  the  patent,  and  the  grant- 
ing of  the  extension.9     Congressional  extensions,  when 

3  1  Statutes  at  Large,  Ch.  11,  Abbott,  407,  1870;  The  Fire  Ex- 
Section  1,  p.  321.  tinguisher  Case,  21  F.  R.  42, 1884. 

4  4  Statutes  at  Large,  Ch.  162,  7  Evans  v.  Jordan,  9  Cranch, 
Section  2,  p.  559.  199,  1815. 

5  5  Statutes  at  Large,  Ch.  357,  8  Bloomer  v.  McQuewan,  14 
Section  21,  p.  125.  Howard,  539,  1852. 

6  Bloomer  v.  Stolley,  5  McLean,  9  Agawam  Co.  v.  Jordan,  7  Wal- 
161,  1850;  Jordan  v.  Dobson,  2  lace,  583,  1868. 


CHAP.    X.]  EXTENSIONS  311 

granted,  are  usually  granted  for  the  term  of  seven  years; 
but  they  may  lawfully  be  granted  for  any  limited  length 
of  time,  whether  longer  or  shorter  than  that. 

§  257.  Some  special  acts,  for  the  extension  of  patents, 
merely  extend  their  duration  by  a  simple  legislative  edict, 
and  do  no  more.10  Others  instruct  the  Commissioner  of 
Patents  to  ascertain  the  truth  relevant  to  sundry  ques- 
tions of  fact  mentioned  therein;  and  authorize  him  to 
decide  whether  in  view  of  those  facts,  and  of  sundry  con- 
siderations of  justice  and  of  public  policy,  the  patent  ought 
to  be  extended ;  and  direct  him  to  extend  it,  if  his  decision 
is  in  the  affirmative.11  When  patents  are  extended  in  this 
latter  method,  those  provisions  of  the  special  act  which 
limit  the  operation  of  the  extension,  need  not  be  recited 
in  the  certificate  of  extension,  which  the  Commissioner 
indorses  upon  the  patent  or  otherwise  puts  forth.  The 
law  reads  the  certificate  in  the  light  of  that  statute,  with- 
out any  such  recital.12 

§  258.  Special  Acts  of  Congress  granting  or  authorizing 
extensions  of  patents,  come  within  the  general  rule,  that 
the  validity  of  a  statute  cannot  be  questioned  in  courts,  on 
any  allegation  that  its  passage  was  procured  by  fraud  or 
bribery.13  Such  Acts  are  considered  as  engrafted  on  the 
general  patents  laws,  and  are  to  be  construed  in  connection 
with  them.14  Although  the  Constitution  authorizes  Con- 
gress to  grant  exclusive  rights  in  inventions  only  to  invent- 
ors, Congress  may  provide,  when  exercising  its  power  in 

10  Bloomer  v.  McQuewan,  14  12Agawam  Co.  v.  Jordan,  7 
Howard,  539,  1852;  Woodworth      Wallace,  583,  1868. 

v.  Edwards,  3  Woodbury  &  Minot,  13  Gibson  v.  Gifford,  1  Blatch. 

123,  1847.  529,  1850. 

11  Agawam  Co.  v.  Jordan,  7  14  Bloomer  v.  McQuewan,  14 
Wallace,  583,  1868.  Howard,    539,    1852;    Jordan    v. 

Dobson,  2  Abbott,  408,  1870. 


312  EXTENSIONS  [CHAP.    X. 

particular  cases,  thai  assignees  of  the  inventors  shall  have 
the  same  rights  under  the  extended  term,  that  they  had 

under  the  original  term  of  the  patent  extended.1'' 

§  259.  Patent  Office  extensions  of  patents,  were  first  au- 
thorized by  the  Patent  Act  of  July  4,  1836. "  By  the  Pat- 
ent Act  of  March  3,  1861,  they  were  prohibited,  as  to  all 
patents  thereafter  granted.17  The  last  extension  of  the 
kind,  was  granted  in  1875,  and  expired  in  1882.  But 
Congress  is  now  being  asked,  by  a  number  of  able  and 
influential  patent  lawyers,  to  enact  a  general  statute, 
authorizing  the  Commissioner  of  Patents  or  some  other 
tribunal,  to  extend  such  patents  as  may  be  found,  on  judi- 
cial investigation,  to  be  ethically  entitled  thereto.  For 
this  reason,  and  because  many  of  the  rules  and  doctrines 
of  law,  which  were  established  in  suits  for  infringements 
of  Patent  Office  extensions,  are  equally  applicable  to  suits 
based  on  Congressional  extensions,  it  is  expedient  to  ex- 
plain those  rules  and  doctrines  in  this  book. 

§  260.  The  Patent  Act  of  1836  provided18  that,  when- 
ever any  patentee  of  an  invention  should  desire  an  exten- 
sion of  his  patent,  he  might  make  application  therefor  in 
writing,  to  the  Commissioner  of  the  Patent  Office,  setting 
forth  the  grounds  thereof;  and  that  the  Commissioner 
should  thereupon,  and  on  the  payment  of  a  specified  fee, 
cause  to  be  published  a  notice  of  the  application,  and  of 
the  time  and  place  when  and  where  the  same  would  be 
considered.  The  Secretary  of  State,  the  Commissioner  of 
the  Patent  Office,  and  the  Solicitor  of  the  Treasury,  were 
constituted  a  board  to  hear  and  decide  upon  the  evidence 

15  Blanchard's  Gun-Stock  Turn-          17 12  Statutes  at  Large,  Ch.  88, 

ing  Factory  y>.  Warner,  1  Blatch.  Section  16,  p.  249. 
259,  1848.  18  5  Statutes  at  Large,  Ch.  357, 

19  5  Statutes  at  Large,  Ch.  357,  Section  18,  p.  124. 
Section  IS,  p.  124. 


CHAP.    X.]  EXTENSIONS  313 

produced  before  them,  both  for  and  against  the  extension. 
If,  upon  such  hearing  in  any  particular  case,  it  appeared 
to  the  board,  having  a  due  regard  to  the  public  interest, 
that  it  was  just  and  proper  that  the  term  of  the  patent 
should  be  extended  by  reason  of  the  patentee,  without 
neglect  or  fault  on  his  part,  having  failed  to  obtain  from 
the  use  and  sale  of  his  invention,  a  reasonable  remunera- 
tion for  the  time,  ingenuity,  and  expense  bestowed  upon 
the  same,  and  upon  its  introduction  into  public  use;  the 
statute  made  it  the  duty  of  the  Commissioner  to  extend 
the  patent,  by  making  a  certificate  thereon  of  such  exten- 
sion, for  the  term  of  seven  years  from  and  after  the  expira- 
tion of  the  first  term.  The  statute  also  provided  that  no 
such  extension  should  be  granted  after  the  expiration  of 
the  term  for  which  it  was  originally  issued;  and  that 
when  so  extended,  a  patent  should  have  the  same  effect 
in  law  as  though  it  had  been  originally  granted  for  the 
term  of  twenty-one  years;  and  that  the  benefit  of  such 
renewal  should  extend  to  assignees  and  grantees  of  the 
right  to  use  the  thing  patented,  to  the  extent  of  their  re- 
spective interests  therein. 

The  Patent  Act  of  184819  amended  the  above  provisions 
by  vesting  the  power  of  the  board,  in  the  Commissioner  of 
Patents  alone;  and  by  directing  him  to  take  into  considera- 
tion the  original  patentability  and  novelty  of  the  inven- 
tions covered  by  patents  sought  to  be  extended,  as  well  as 
to  be  governed  by  the  rules  and  principles  that  had  there- 
tofore governed  the  board. 

No  other  change  was  ever  made  in  the  statute  relevant 
to  the  subject,  until  in  1861  it  was  repealed  as  to  future 
patents.  As  to  patents  granted  before  March  2,  1861, 
it  was  re-enacted  in  the  Patent  Act  of  1870, 20  and  again 

19  9  Statutes  at  Large,  Ch.  47,  20 16  Statutes  at  Large,  Ch.  230, 

Section  1,  p.  231.  Sections  63  to  67,  p.  208. 


31  I  EXTENSIONS  [CHAP.    X. 

re-enacted  in  the  Revised  Statutes.21  In  both  these  re- 
enactments,  one  provision  is  found,  which  did  not  exist 
in  the  former  law,  namely,  the  provision  that  the  appli- 
cation should  be  filed  not  more  than  six  months  nor  less 
than  ninety  days  before  the  expiration  of  the  original  term 
of  the  patent. 

§  261.  All  the  statutes  which  provided  for  extensions  of 
patents,  specified  "patentees"  as  being  persons  entitled 
to  apply  for  extensions,  and  mentioned  no  others.  When 
the  first  of  those  statutes  was  enacted  in  183G,  nobody 
but  an  inventor  or  his  executor  or  administrator,  could 
be  a  patentee.  In  1837,  however,  Congress  enacted,  that 
any  patent  thereafter  issued,  might  be  made  and  issued 
to  the  assignee  or  assignees  of  the  inventor.22  In  all  sub- 
sequent cases,  where  that  course  was  pursued,  the  invent- 
ors and  the  patentees  were  not  the  same  persons;  but  no 
corresponding  change  was  ever  made  in  the  statutes  rele- 
vant to  extensions.  The  question  has  therefore  arisen, 
whether,  in  such  cases,  it  was  the  inventor  who  had  a 
right  to  apply  for  an  extension,  or  whether  the  patentee 
was  the  person  who  had  that  right,  or  whether  both  the 
inventor  and  the  patentee  must  have  joined  in  such  an 
application.  Where  the  inventor  would  have  an  equitable 
interest  in  the  extension  if  granted,  it  was  proper  for  him 
to  apply  for  that  extension  alone.23  When  granted,  the 
legal  title  to  such  an  extension  would  vest  in  the  patentee, 
because  such  an  extension  was  in  the  nature  of  an  amend- 
ment of  his  patent;  but  the  equitable  title  might  vest 
wholly  in  the  inventor,  or  vest  partly  in  the  inventor  and 
partly  in  the  patentee,  or  vest  partly  in  the  inventor  and 

21  Revised  Statutes,  Sections  23  Sayles  v.  Dubuque  &  Sioux 
4924  to  4928.  City  Railroad  Co.,  5  Dillon,  220, 

22  5  Statutes  at  Large,  Ch.  45,  1878. 
Section  6,  p.  193. 


CHAP.    X.]  EXTENSIONS  315 

partly  in  third  persons,  according  to  the  equitable  facts 
of  each  case.  When  the  inventor  would  have  no  equitable 
interest  in  the  extension  if  granted,  no  extension  could 
be  obtained,  either  on  his  application,  or  on  that  of  the 
patentee,  or  on  that  of  both  together;  because  it  was  not 
the  intention  or  scope  of  the  statute  to  grant  extensions 
of  patents  for  the  sole  benefit  of  others  than  the  inventors 
of  the  things  secured  thereby.24 

Whether  the  executor  or  administrator  of  an  inventor- 
patentee,  had  a  right  to  apply  for  an  extension,  was  the 
first  of  the  ten  questions  which  were  submitted  to  the 
Supreme  Court  in  the  celebrated  case  of  Wilson  v.  Rous- 
seau. That  question  was  argued  in  the  affirmative  by 
Webster,  Seward,  and  Latrobe,  and  decided  in  the  affirma- 
tive by  the  court.25 

Where  a  joint  patent  was  taken  out  by  joint  inventors, 
all  had  to  join  in  an  application  for  an  extension  of  that 
patent,  if  all  were  living;  and  if  any  were  dead,  the  legal 
representatives  of  the  deceased  had  to  unite  in  such  an 
application.26 

§  262.  No  Patent  Office  extension  was  ever  grantable 
after  the  expiration  of  the  original  term.27  Such  exten- 
sions could  be  granted  at  any  time  before  the  midnight 
at  the  end  of  the  last  day  of  that  term;  because  fourteen- 
year  patents  did  not  expire  till  the  last  hour  of  the  four- 
teenth anniversary  of  the  day  of  their  respective  dates.28 
Patents  limited  in  law  to  the  term  of  fourteen  years  from 
the  date  of  earlier  foreign  patents,  were  extendible,  at  the 

24  Wilson v.Turner,Taney'sCir-  "Act  of  1836>  Section  18;  Act 
cuit  Court  Decisions,  292,  1845.       of  1870,  Section  63;  Revised  Stat- 

25  Wilson  v.  Rousseau,  4  How-      utes,  Section  4924. 

ard,  673,  1846.  28  Johnson    v.    McCullough,    4 

2«  Wickersham's  Case,  4  O.  G.      Fisher,  170,  1870. 
155,  1873. 


31  (i  EXTENSIONS  [CHAP.    X. 

discretion  of  the  Commissioner  of  Patents,  as  well  as  those 
not  so  limited;29  but  in  such  a  case  the  extension  had  to 
he  granted  before  the  expiration  of  the  foreign  patent, 
even  though  the  extended  patent  purported  on  its  face 
to  run  for  some  time  longer.80 

§  2G3.  Whether  an  inventor-patentee  needed  to  possess 
any  interest  in  the  first  term  of  his  patent  at  the  time  of 
applying  for  an  extension  thereof,  was  the  fifth  question 
submitted  to  the  Supreme  Court  in  the  case  of  Wilson  v. 
Rousseau.31  That  question  was  decided  in  the  negative. 
Even  where  the  assignee  of  the  first  term  of  a  patent  sur- 
rendered and  reissued  it,  the  inventor-patentee  had  a 
right  to  ignore  the  reissue,  and  to  apply  for  and  receive 
an  extension  of  the  original  patent.32 

§  264.  It  was  against  the  policy  of  the  law,  if  not  against 
its  letter,  to  extend  any  patent,  in  the  extension  of  which, 
if  granted,  the  inventor  would  have  no  property  right. 
The  right  to  an  extension  was  given  by  the  law,  chiefly 
with  a  view  to  the  advantage  of  the  inventor,  and  not  of 
his  assignee  or  grantee.33  It  never  was  necessary,  however, 
that  the  inventor  should  be  in  a  condition  to  receive  the 
legal  title  to  the  extension,  or  even  that  the  entire  equi- 
table estate  in  it  should  belong  to  him.  An  interest  in 
the  proceeds  of  the  exclusive  right  during  the  extended 
term,  was  enough  to  satisfy  the  policy  of  the  law  in  this 
respect.34  Even  where  the  original  patent  was  granted 
to  an  assignee,  and  where  the  extension  was,  therefore, 

29Tilghman  v.  Mitchell,  9  Blatch.  97,  1869;  Crompton  v. 
Blatch.  27,  1871.  Belknap    Mills,    3    Fisher,    536, 

30  New   American   File   Co.   v.      1869. 

Nicholson  File  Co.,  8  F.  R.  816,  33  Wilson  v.  Turner,  Taney's 
1881.  Circuit    Court    Decisions,    292, 

31  Wilson  v.  Rousseau,  4  How-      1845. 

ard,  673,  1846.  34  Gear  v.  Grosvenor,  1  Holmes, 

32  Potter     v.     Braunsdorf,     7      215,  1873. 


CHAP.    X.]  EXTENSIONS  317 

in  point  of  legal  title,  a  prolongation  of  his  patent,  the 
extension  was  held  to  be  valid,  because  the  inventors  had 
interests  in  its  proceeds.35  Moreover,  inventors  were 
presumed  in  law  to  have  had  a  sufficient  interest  to  sup- 
port extensions  actually  granted,  unless  the  contrary  was 
proved  to  have  been  the  fact.36 

§  265.  The  certificate  of  extension,  which  was  provided 
for  by  the  statute,37  was  generally  indorsed  on  the  original 
parchment  letters  patent;  but  where  the  original  docu- 
ment was  lost  or  was  out  of  the  control  of  the  person  ap- 
plying for  the  extension,  that  certificate  was  indorsed  upon 
a  certified  copy  of  the  letters  patent  and  was  equally  valid.38 

§  266.  Jurisdiction  to  extend  a  particular  patent,  was 
acquired  by  the  Commissioner,  under  the  statutes  in  force 
prior  to  July  8,  1870,  whenever  the  proper  person  filed  an 
application  for  such  an  extension,  and  paid  the  requisite 
fee; 39  provided  the  application  was  filed,  and  the  fee  paid, 
long  enough  before  the  expiration  of  the  original  term  of 
the  patent,  to  enable  the  Commissioner  to  investigate  the 
matter  in  the  way  prescribed  by  statute.40  After  July  8, 
1870,  the  law  remained  the  same  on  this  point,  except 
that  under  the  statute  of  that  date,  and  under  the  Re- 
vised Statutes,  the  application  had  to  be  filed  not  more 
than  six  months,  nor  less  than  ninety  days  before  the  first 
term  of  the  patent  would  expire.41  The  jurisdiction  al- 
ways depended,  therefore,  upon  the  application  being 
filed  and  the  fee  paid  by  the  proper  person  at  the  proper 

35  Sayles  v.  Dubuque  &  Sioux         39  Gear  v.  Grosvenor,  1  Holmes, 

City  Railroad  Co.,  5  Dillon,  220,  218,  1873. 
1878.  40  Agawam  Co.  v.  Jordan,  7  Wal- 

38  Ruggles  v.  Eddy,  10  Blatch.  lace,  583,  1868. 
56,  1872.  41 16  Statutes  at  Large,  Ch.  230, 

37  Patent  Actof  1836, Section  18.  Section  63,  p.  208;  Revised  Stat- 

38  Potter     r.     Braunsdorf,     7  utes,  Section  4924. 
Blatch.  108,  1869. 


318  EXTENSIONS  [CHAP.    X. 

1 1 1 1 li*.    The  decision  of  the  Commissioner,  relevanl  to  the 

existence  of  his  jurisdiction,  was  never  conclusive  in  any 
case.1'2  The  validity  of  a  Patent  Office  extension,  was 
therefore  open  to  inquiry  in  an  infringement  suit,  when  it 
was  questioned  on  the  theory  that  the  person  who  applied 
for  it,  was  not  such  a  person  as  had  the  legal  rigid  to  do  so. 
In  deciding  that  question,  however,  the  courts  regarded 
with  respect  the  practical  construction  of  the  statute, 
which  was  necessarily  involved  in  the  granting  of  the 
extension.4"  Indeed  the  Supreme  Court  has  held  that  the 
practical  construction  given  to  a  statute,  by  the  executive 
branch  of  the  government  charged  with  its  execution, 
is  entitled  to  great  weight,  when  the  true  meaning  of  that 
statute  is  drawn  into  judicial  inquiry.44 

§  267.  The  meritorious  facts  which  entitled  an  inventor- 
patentee  to  a  Patent  Office  extension  were  that,  without 
fault  or  neglect  on  his  part,  he  had  failed  to  obtain  from 
the  use  and  sale  of  his  invention,  a  reasonable  remunera- 
tion for  the  time,  ingenuity,  and  expense  bestowed  upon 
it,  and  upon  its  introduction  into  public  use.45  Unlike 
the  foundation  facts  which  entitle  a  patentee  to  a  reissue, 
these  points  were  not  required  by  the  statute  to  exist, 
absolutely.  The  statutory  provision  was  that  they  should 
appear  to  the  satisfaction  of  the  Commissioner  of  Pat- 
ents. It  was  therefore  immaterial  whether  the  courts 
were  satisfied  of  their  existence  or  not.  The  fact  that  a 
particular  extension  was  granted,  showed  that  the  Com- 
missioner was  satisfied  of  the  existence  of  those  facts  in 
that  case;  and  evidence  that  they  did  not  in  fact  exist, 

42  Wilson  v.  Rousseau,  4  How-  44  Grant  v.  Raymond,  6  Peters, 
ard,  687,  1846.  244,  1832. 

43  Brooks  v.  Bicknell,  3  McLean,  45  Patent  Act  of  1836,  Section 
250,  1843.  18;  Patent  Act  of  1870,  Section  66; 

Revised  Statutes,  Section  4927. 


CHAP.    X.]  EXTENSIONS  319 

was  therefore  inadmissible  in  a  suit  for  infringement  of 
the  patent  during  that  extension.46 

§  268.  The  statute  made  it  the  duty  of  the  Commis- 
sioner to  advertise  all  applications  for  extensions,  and  to 
refer  such  cases  to  the  principal  examiner  having  in  charge 
the  class  of  inventions  to  which  the  patent  sought  to  be 
extended  belonged,  and  having  received  the  report  of 
the  examiner,  to  hear  and  decide  each  particular  case  at 
the  time  and  place  designated  in  the  advertisement. 
All  these  provisions  were  directory,  and  none  of  them 
were  jurisdictional.  The  validity  of  no  extension  could 
therefore  be  affected  by  proof,  in  an  infringement  suit, 
that  some  or  all  of  those  acts  were  omitted  by  the  Com- 
missioner, or  were  irregularly  performed.47 

§  269.  No  fraud,  practiced  upon  or  by  the  Commis- 
sioner, relevant  to  securing  or  granting  an  extension,, 
could  ever  become  the  subject  of  inquiry  in  any  suit 
for  infringement.  The  decision  of  the  Commissioner,  in 
granting  an  extension,  did  not,  however,  foreclose  all 
inquiry  into  allegations  of  fraud,  as  it  did  into  allegations 
of  inadvertence,  error,  or  ministerial  irregularity.  The 
law  was  not  so  absurd  as  to  make  a  man's  own  decision 
that  he  had  committed  no  fraud,  and  suffered  none  to  be 
committed  upon  him,  a  conclusive  adjudication  of  that 
point.  But  charges  so  grave  were  thought  to  deserve  a 
special  proceeding  for  their  investigation.  They  were 
not  to  be  bandied  about  as  collateral  makeweights  in 
infringement  suits.  When  investigated,  they  had  to  be 
investigated  in  a  special  proceeding  brought  to  repeal 
the  grant  of  the  extension.' 


48 


48  Clum  v.  Brewer,  2  Curtis,  506,  435, 1844;  Colt  v.  Young,  2  Blatch. 

1855;  Jordan  v.  Dobson,  2  Abbott,  473,  1852;  Tilghman  v.  Mitchell, 

408,  1870.  9  Blatch.  27,  1871. 

47  Brooks  v.  Jenkins,  3  McLean,  48  Rubber  Co.  v.  Goodyear,  9 


320 


EXTENSIONS 


(  J1A1'.    X, 


§270.  "The  benefil  of  the  extension  of  a  patent  shall 
extend  to  the  assignees  and  grantees  of  the  right  to  use 
the  thing  patented,  to  the  extent  of  their  interest 
therein."  ''•'  This  enactment,  in  almost  precisely  the 
same  words,  was  always  found  in  statutes  providing  for 
extensions  of  patents.50  The  purport  of  this  law  was 
never  learned  from  its  perusal. 

The  duty  of  ascribing  a  definite  meaning  to  the  enact- 
ment, devolved  upon  the  courts.  But  the  clause  was  so 
ambiguous  that  the  judges  could  not  agree  in  its  con- 
struction. The  provision  was  enacted  in  1836,  but  it  was 
still  a  subject  of  controversy  in  the  Supreme  Court,  more 
than  thirty-seven  years  later.  When  more  than  forty 
years  had  passed  after  its  enactment,  a  text-writer  col- 
lated the  adjudicated  cases,  and  stated  the  full  adjudi- 
cated meaning  of  the  statutory  language.  That  mean- 
ing was  then  found  to  be  as  follows. 

§  271.  Every  person  who,  at  the  beginning  of  any  ex- 
tended term  of  any  patent,  had  a  right  to  use  a  particular 
specimen  of  any  thing  covered  by  that  patent,  had  the 
same  right  to  use  that  specimen  during  that  extended 
term,  unless  his  right  was  expressly  limited  so  as  not  to 
include  that  term;  and  if  such  a  person  was  the  owner  of 
such  a  specimen,  he  might  sell  it  to  be  used  by  others 
during  that  extension.51 


Wallace,    796,    1869;    Mowry   v. 
Whitney,  14  Wallace,  434,  1871. 

49  Revised  Statutes,  Section 
4928. 

50  Patent  Act  of  1836,  Section 
18;  Patent  Act  of  1870,  Section  67. 

51  Wilson  v.  Rousseau,  4  How- 
ard^ 677,  1846;  Bloomer  v.  Mc- 
Quewan,  14  Howard,  539,  1852; 
Chaffee  v.  Belting  Co.,  22  How- 


ard, 217,  1859;  Bloomer  v.  Millin- 
ger,  1  Wallace,  340,  1863;  Mit- 
chell v.  Hawley,  16  Wallace,  544, 
1872;  Eunson  v.  Dodge,  18  Wal- 
lace, 414,  1873;  Paper-Bag  Cases, 
105  U.  S.  766,  1881;  Wood- 
worth  v.  Curtis,  2  Woodbuiy  & 
Minot,  524,  1847;  Goodyear  v. 
Rubber  Co.,  1  Cliff.  349,  1859; 
Wooster  v.  Sidenberg,  13  Blatch. 


CHAP.    X.]  EXTENSIONS  321 

The  limitations  expressed  in  this  rule  are  not  to  be  over- 
looked. 1.  It  applied  only  to  persons  whose  right  to  use 
existed  at  the  beginning  of  the  extension.  It  was  there- 
fore possible  for  patentees  to  avoid  the  rule  altogether, 
by  making  their  licenses  expire  one  day  before  the  end  of 
the  existing  terms  of  their  respective  patents.  2.  The 
rule  conferred  no  right  upon  any  person  on  account  of  his 
having  had  a  right  to  make  or  sell  specimens  of  the  pat- 
ented thing.  3.  The  rule  did  not  apply  to  any  patent  for 
a  process.52  4.  The  rule  conferred  no  right  under  an  ex- 
tension, that  did  not  exist  under  the  former  term.  Ac- 
cordingly, if  the  former  right  was  subject  to  a  royalty, 
the  right  under  the  extension  was  subject  to  the  same 
royalty.53  5.  The  rule  conferred  no  right  to  make  or 
use  or  sell  any  new  specimen  of  the  patented  thing; 54 
though  it  did  confer  a  right  to  repair  the  articles  to  which 
it  applied.55  6.  The  rule  did  not  apply  where  the  right  to 
use,  when  granted  by  the  patentee,  was  expressly  limited 
to  the  existing  term  of  the  patent.56  The  right  provided 
by  the  rule  was  a  property  right;  and  the  specimens  to 
which  it  referred,  and  the  right  to  use  those  specimens, 
might  be  transferred  by  sale,  devise,  or  assignment  in 
insolvency.57 

88,   1875;  Black  v.  Hubbard,  3  55  Wilson  v.  Simpson,  9  Howard, 

Bann.  &  Ard.  39,  1877.  109,  1850;  Aiken  v.  Print  Works, 

"Wetherell    v.    Zinc    Co.,    6  2  Cliff.  435,  1865;  Farrington  v. 

Fisher,  50,  1872.  Detroit,  4  Fisher,  216,  1870. 

53  Union  Mfg.  Co.  v.  Lounsbury,  66  Mitchell  v.  Hawley,  16  Wal- 
41  New  York,  363,  1869.  lace,  544,  1872. 

54  Hodge    v.    Railroad    Co.,    6  57  Woodworth     v.     Curtis,     2 
Blatch.  165,  1868;  Wood  v.  Rail-  Woodbury  &  Minot,  524,  1847. 
road  Co.,  2  Bissell,  62,  1868. 


CHAPTER  XI 


TITLE 


272.  The  nature  of  titles,  and  the 

methods  of  their  acquisi- 
tion. 

273.  Title  by  occupancy. 

274.  Title  by  assignment. 

274a.  Special  tenures  and  incom- 
plete estates. 

275.  Characteristics,    authentica- 

tion, and  effect  of  assign- 
ments. 

276.  Consideration     for     assign- 

ments. 
276a.   Assignment   of  future   in- 
ventions. 

277.  Assignments  of  rights  of  ac- 

tion   for    past     infringe- 
ments. 

278.  Construction  of  assignments. 

279.  Reformation  of  assignments. 

280.  Assignment  of  extensions. 

281.  Recording  and  notice. 


282.  Warranty  of  title. 

283.  No     implied     warranty     of 

validity. 
28 1 .  Express  warranties  of  valid- 
ity. 

285.  Equitable  titles;    how    cre- 

ated. 

286.  Equitable        titles;        how 

treated. 

287.  Title  by  grant. 

288.  Extra-territorial  rights  con- 

veyed by  grants. 
288a.  Mortgages  of  patents. 

289.  Title  by  creditor's  bill. 

290.  Title  by  bankruptcy. 

291.  Title  by  death. 

292.  Tenancy  in  common. 

294.  Rights  of  tenants  in  common 

as  against  each  other. 

295.  Partition,    and    removal   of 

clouds. 


§  272.  Titles  to  patent  rights  are  capable  of  two  inde- 
pendent classifications.  One  relates  to  the  nature  of 
title,  and  the  other  relates  to  the  methods  by  which  title 
may  be  acquired.  In  the  first  of  these  aspects,  titles  are 
divisible  into  those  which  are  purely  legal,  those  which  are 
purely  equitable,  and  those  which  are  both  legal  and 
equitable.  In  the  second  aspect,  they  are  divisible  into 
those:  1.  By  occupancy.  2.  By  assignment.  3.  By 
grant.  4.  By  creditor's  bill.  5.  By  bankruptcy.  6.  By 
death.  Titles  which  are  both  legal  and  equitable  may  be 
322 


CHAP.    XI.]  TITLE  323 

acquired  in  either  of  these  methods.  Titles  which  are 
purely  equitable  may  be  acquired  by  either,  except  the 
first;  and  those  which  are  purely  legal  may  be  transferred 
by  either,  except  the  first,  fourth  and  fifth.  It  is  the  plan 
of  this  chapter  to  treat  the  subject  of  title  under  this  six- 
fold division;  and,  in  general,  to  treat  it  with  a  view  to 
title  which  is  both  legal  and  equitable,  and  is  therefore 
complete;  but  also,  to  incorporate  into  that  treatment 
such  statements  as  may  show  the  relations  which  purely 
legal  and  purely  equitable  titles  bear  to  each  other  and  to 
the  law,  and  to  conclude  the  whole  with  a  discussion  of 
such  points  as  relate  to  patents  owned  contemporaneously 
by  a  plurality  of  persons. 

§  273.  Title  by  occupancy  is  that  title  to  a  patent 
which  any  person  may  acquire  by  inventing  any  new  and 
useful  process,  machine,  manufacture,  composition  of 
matter  or  design,  and  by  applying  for  and  obtaining  a  pat- 
ent thereon.  During  the  time  between  the  day  of  inven- 
tion and  the  date  of  letters  patent  therefor,  that  title  is 
inchoate.1  Such  an  inchoate  right  may  be  assigned;  and 
an  assignment  thereof  will  convey  the  legal  title  to  the 
letters  patent,  as  soon  as  the  letters  patent  are  granted ; 2 
whether  or  not  the  assignment  requests  the  Commissioner 
of  Patents  to  issue  the  letters  patent  to  the  assignee.3 
This  rule  applies  not  only  to  cases  where  the  assignments 
are  recorded  before  the  granting  of  the  patents,4  but  also 
to  cases  where,  though  executed  before,  they  are  not 
recorded  till  after  that  event.5    So  also,  it  applies  to  cases 

1  Gayler  v.  Wilder,  10  Howard,  4  Consolidated  Electric  Light 
493,  1850;  Hendrie  v.  Sayles,  98  Co.  v.  Edison  Electric  Light  Co., 
U.  S.  551,  1878.  25  F.  R.  719,  1885. 

2  See  Section  274.  5  United  States  Stamping  Co. 

3  Harrison  v.  Morton,  83  Md.  v.  Jewett,  7  F.  R.  869,  1880. 
477,  1896. 


32  I  TITLE  [CHAP.    XI. 

where  applications  are  divided  after  they  are  assigned,6 
and  t<>  cases  where  the  assignments  are  executed  after  the 
applications  for  patents  are  rejected,  and  before  those 
rejections  are  reversed.7  The  inchoate  right  to  a  Patent 
Office  extension  of  a  patent,  when  such  a  right  was  pro- 
vided by  law,8  was  also  a  proper  subject  of  assignment, 
even  while  it  remained  inchoate; 9  and  such  an  assignment 
also  operated  to  convey  the  legal  title  to  such  an  exten- 
sion, whenever  such  an  extension  was  granted  by  the 
Commissioner  of  Patents.10  An  assignment  of  an  incho- 
ate title  to  a  patent,  which  does  not  request  the  Com- 
missioner to  issue  the  letters  patent  to  the  assignee, 
will  convey  not  only  the  equitable  title  but  also  the 
legal  title  thereto,  as  soon  as  the  letters  patent  are 
granted.11 

The  title  by  occupancy,  which  an  inventor  acquires 
when  he  invents,  is  not  affected  by  the  fact  that  he  is  at 
the  time  in  the  employ  of  another; 12  for  persons  employed, 
as  much  as  employers,  are  entitled  to  their  own  independ- 
ent inventions.13  The  original  title  of  a  patentee  to  a 
patent  issued  to  him,  is  presumed  to  continue  till  he  is 
shown  to  have  parted  with  it ;  u  and  the  grantee  named  in 
a  reissue  patent  is  presumed  to  be  the  lawful  owner  of  that 
patent  until  he  is  shown  not  to  have  owned  the  patent 
which  he  surrendered  in  order  to  obtain  that  reissue,  or 

6  Puetz  v.  Bransford,  31  F.  R.  "  See  Section  274. 

461,  1887.  12  Hapgood  v.  Hewitt,  119  U.  S. 

■>  Gay  v.  Cornell,  1  Blatch.  510,  226,    1886;   Solomons   v.   United 

1849.  States,  137  U.  S.  346,  1890;  Dal- 

8  From  July  4, 1836,  to  March  2,  zell  v.  Dueber  Mfg.  Co.,  149  U.  S. 
1875.  320,  1893. 

9  Nicholson  Pavement  Co.  v.  13Agawam  Co.  v.  Jordan,  7 
Jenkins,  14  Wallace,  456,  1871.  Wallace,  583,  1868. 

IU  Railroad  Co.  v.  Trimble,  10  u  Fischer  v.  Neil,  6  F.  R.  89, 
Wallace,  380,  1870.  1881. 


CHAP.   XI.]  TITLE  325 

is  shown  to  have  parted  with  the  title  to  the  reissue  after 
that  date.15 

§  274.  An  assignment  of  a  patent  is  an  instrument  in 
writing,  which,  in  the  eye  of  the  law,  purports  to  convey 
the  entire  title  to  that  patent,  or  to  convey  an  undivided 
share  in  that  enth*e  title.16  An  assignment  may  purport 
to  convey  the  ownership  of  the  patent,  or  an  undivided 
share  of  that  ownership,  or  it  may  purport  to  convey  the 
exclusive  right,  or  an  undivided  share  thereof,  to  make, 
use  and  sell  the  invention  throughout  the  United  States. 
Such  a  document,  in  the  latter  form,  is  as  truly  an  assign- 
ment, as  is  a  document  which  employs  the  other  phrase- 
ology.17 And  an  assignment  in  either  form,  is  not  less  an 
assignment  because  it  is  coupled  with  a  license  back  to 
the  assignor.18 

There  has  been  some  doubt  as  to  whether  an  assignment 
of  a  pending  application  without  a  request  to  the  Commis- 
sioner of  Patents  that  the  patent  issue  in  the  name  of  the 
assignee  conveyed  more  'than  the  equitable  title  to  the 
patent.  It  now  appears  to  be  settled  that  such  an  assign- 
ment carries  with  it  the  whole  interest,  legal  and  equita- 
ble.19 

Assignments  of  legal  titles  to  patents  must  be  in  writing, 

"  Washburn  &  Moen  Mfg.  Co.  F.  R.  792,  1891;  Russell  v.  Kern, 

v.  Haish,  4  F.  R.  900,  1880.  58  F.  R.  384,  1892;  Sirocco  En- 

16  Gayler  v.  Wilder,  10  Howard,  gineering  v.  Monarch  Ventilator 
477,  1850;  Waterman  v.  Macken-  Co.,  184  F.  R.  84,  1910;  Lock 
zie,  138  U.  S.  255, 1891 ;  Pope  Mfg.  Joint  Pipe  Co.  v.  Melber,  234  F.  R. 
Co.  v.  G.  &  J.  Mfg.  Co.,  144  U.  S.  319,  1916. 

249,  1892.  13Wende  v.  Horine,  191  F.  R. 

17  Rapp  v.  Kelling,  41  F.  R.  792,  620,  1911;  Hildreth  v.  Auerbach, 
1890;  Johnson  Signal  Co.  v.  Union  200  F.  R.  972,  1912;  Individual 
Signal  Co.,  59  F.  R.  23,  1893;  Drinking  Cup  Co.  v.  Osmun-Cook 
Paulus  v.  M.  M.  Buck  Mfg.  Co.,  Co.  (reviewing  authorities  on 
129  F.  R.  594,  1904.  both  sides  of  the  question),  220 

is  Pope  Mfg.  Co.  v.  Clark,  46      F.  R.  335,  1915. 


:;•_>(')  TITLE  [<  II  up.  XT. 

because  the  statute  provides  no  other  method  <>f  effecting 
such  an  assignment;  -° and  because,  since  patenl  rights  are 
creatures  of  statutes  and  not  of  common  law,  the  transfer 
of  the  legal  title  thereto  cannot  be  regulated  by  the  rules 
of  the  latter  system.-1  An  equitable  title  may  be  created 
by  parol,22  and  may  be  transferred  by  the  same  method.23 
But  a  recital  in  a  writing  that  a  particular  person  is  an 
owner  with  the  subscriber  of  a  patent  granted  to  the  latter, 
is  not  even  an  equitable  assignment.21  Persons  who  issue 
signed  assignments  in  blank,  are  estopped  from  denying 
the  propriety  of  the  filling,  when  the  filled  assignments 
are  invoked  by  purchasers  for  valuable  considerations, 
who  had  no  notice  of  any  fraud  or  error  in  the  filling.26 

§  274a.  Titles  conveyed  by  assignments  are  usually 
unconditional,  but  they  may  also  be  held  upon  special 
tenures.  One  instance  of  such  a  tenure  is  presented  where 
the  assignment  contains  a  condition  that  the  assignee 
shall  pay  a  specified  royalty  to  the  assignor  during  the 
life  of  the  patent  assigned,26  and  shall  make  enough  of 
the  patented  articles  to  supply  the  demand  therefor; 27 
or  shall  sell  the  patent  and  pay  the  proceeds  to  the  assignor 

20  Revised  Statutes,  Section  1885;  Burr  v.  De  La  Vergne,  102 
4898;  Jewett  v.  Atwood  Suspender  N.  Y.  422,  1886;  Searle  v.  Hill,  73 
Co.,  100  F.  R.  648,  1900.  Iowa,367, 1887;  Jones  v.  Reynolds, 

21  Gayler  v.  Wilder,  10  Howard,  120  N.  Y.  215,  1890;  Schmitt  v. 
498,  1850;  Atherton  Mach.  Co.  v.  Nelson  Valve  Co.,  125  F.  R.  754, 
Atwood-Morrison  Co.,  102  F.  R.  1903. 

949,  1900.  24  Kearney  v.  Railroad  Co.,  27 

™  Dalzell  v.  Dueber  Mfg.  Co.,  F.  R.  701,  1886. 

149  U.  S.  320,  1893;  Whiting  v.  25  National  Heeling-Mach.  Co. 

Graves,  3  Bann.  &  Ard.  225,  1878;  v.  Abbott,  70  F.  R.  56,  1895. 

Cook  v.  Sterling  Electric  Co.,  118  26  Littlefield  v.  Perry,  21  Wal- 

F.  R.  47,  1902;  Prest-O-Lite  Co.  lace,  220,  1874;  Boesch  v.  Graff, 

v.  Avery  Portable  Fighting  Co.,  133  U.  S.  701,  1890. 

164  F.  R.  60,  1908.  27  Dow  v.  Harkin,  67  N.  H.  383, 

23  Whitney  v.  Burr,  115  111.  293,  1892. 


CHAP.   XI.]  TITLE  327 

or  to  others  for  his  benefit ; 28  or  shall  not  make  any  assign- 
ment of  the  patent,  or  license  under  it.29  Where  a  title 
is  to  be  held  upon  such  a  special  tenure,  the  condition  of 
that  tenure  should  be  stated  in  the  assignment  conveying 
the  title;  but  the  tenure  may  be  expressed,  and  the  condi- 
tion be  defined,  in  a  separate  unrecorded  paper,  with  equal 
effect  upon  the  parties,  to  the  assignment;30  though  not 
with  any  effect  upon  purchasers  from  the  assignee,  who 
never  had  any  notice  of  the  special  tenure,  or  of  the  con- 
dition upon  which  it  was  established.  The  burden  of 
proving  non-compliance  with  such  a  condition,  rests  upon 
him  who  asserts  it; 31  but  where  non-compliance  is  proved, 
and  no  intervening  rights  are  involved,  the  title  reverts 
to  the  assignor  by  operation  of  law.32 

Where  an  assignment  conveys  a  title  to  a  patent,  to  be 
held  permanently,  upon  condition  of  the  payment  of  cer- 
tain notes  given  for  the  purchase  thereof,  it  is  said  that 
the  non-payment  of  the  notes  will  cause  the  title  to  revert 
to  the  assignor,  but  the  reversion  of  the  title  will  not 
discharge  the  notes.33 

Other  estates  than  a  complete  one,  may  be  created  in 
patents  by  assignments.  An  estate  for  years  and  an  estate 
in  remainder  are  examples  of  these.34  But  a  paper  giving 
an  unassignable  exclusive  right  for  a  term  of  years,  and 
limited  to  less  than  the  entire  rights  of  the  patent,  is  only 
a  license.35 

28  Jonathan  Mills  Mfg.  Co.  v.  32  Pierpoint  Boiler  Co.  v.  Penn 
Whitehurst,  56  F.  R.  594,  1893.        Iron  &  Coal  Co.,  75  F.  R.  293, 

29  Piatt  v.  Fire  Extinguisher  Co.,      1896. 

59  F.  R.  901,  1894.  33  Ockington  v.  Law,  66  Maine, 

30  Pierpoint  Boiler  Co.  v.  Penn  551,  1877;  but  see  Section 
Iron  &  Coal  Co.,  75  F.  R.  292,      276. 

1896.  34  Solomons  v.  United  States,  21 

31  De  Beaumont  v.  Williames,      Court  of  Claims,  481,  1886. 

71  F.  R.  S12,  1896.  "  Moore  Mfg.  &  Foundry  Co. 


328  TITLE  [chap.  XI. 

§  275.  The  patent  assigned  ought  to  be  described  in  the 
assignment  by  its  number  and  date,  and  by  the  name  of  the 
patentee,  and  by  the  name  of  the  invention  which  it  pur- 
ports to  cover;  but  an  assignment  will  be  valid  though  it 
is  lacking  or  erroneous  in  one  or  more  of  these  particulars, 
if  the  description  which  it  contains  excludes  doubt  as  to 
the  patent  intended  to  be  conveyed,36  as  for  example  of 
all  the  property  of  the  assignor  "including  good  will, 
patents,  trade  marks,"  etc.,  even  though  such  an  assign- 
ment could  not  be  recorded.37  An  assignment  of  an  inven- 
tion or  patent  for  a  machine  will  not  convey  any  patent 
for  a  process,  in  the  performance  of  which  that  machine 
finds  its  only  utility.38 

An  assignment  by  a  natural  person  requires  no  other 
authentication  than  the  assignor's  signature;  and  where 
such  an  assignment  is  executed  by  an  attorney  in  fact, 
it  must  be  executed  in  the  name  of  the  assignor,  and  can- 
not lawfully  be  executed  by  the  attorney  in  his  own  name.39 
Where  a  power  of  attorney  provides  that  assignments 
made  under  it,  must  be  approved  by  the  giver  of  the  power ; 
an  assignment  made  without  an}'  such  approval  is  void.40 
Though  an  assignment  is  fully  executed  by  the  signature 
of  the  assignor;  its  subsequent  proof  is  facilitated  by  a 
certificate  of  acknowledgment,  made  by  a  notary  public 
or  other  magistrate,  under  the  statute  of  1897;  for  such  a 

r.  Cronk  Hanger  Co.,  69  F.  R.  ,7  Delaware  Seamless  Tube  Co. 

999,  1895.  v.   Shelby   Steel   Tube   Co.,    160 

36  Case  v.  Morey,  1  New  Hamp-  F.  R.  928,  1908. 

shire,  349,  1818;  Holden  v.  Curtis,  38  Downton  v.  Mfg.  Co.,  9  F.  R. 

2  New  Hampshire,  63,  1819;  Har-  402,   1879;  Downton  v.  Allis,   9 

mon  v.  Bird,  22  Wendell  (N.  Y.),  F.  R.  771,  1881. 

113,  1839;  Hill  v.  Thuermer,  13  39  Machesney  a.  Brown,  29  F.  R. 

Indiana,  351,  1859;  Aeolian  Co.  145,  1886. 

v.  Hallet  &  Davis  Piano  Co.,  134  40  Chauche  v.  Pare,  75  F.  R.  285, 

F.  R.  S72,  1905.  1896. 


CHAP.    XI.]  TITLE  329 

certificate  is  prima  facie  evidence  of  the  genuineness,  and 
of  the  execution,  of  the  assignment  to  which  it  is  attached 
or  otherwise  made  applicable.11  The  designation  of  the 
assignee  in  an  assignment,  is  sufficient  where  the  person 
intended  can  be  identified,  even  where  evidence  outside 
of  the  assignment  is  required  for  that  purpose.42 

A  patent  may  be  assigned  to  a  partnership,  by  the  part- 
nership name,  even  where  that  name  is  artificial,  and  does 
not  contain  the  name  of  any  partner; 43  and  a  patent  may 
likewise  be  assigned,  in  the  partnership  name,  by  the 
partnership  to  which  it  has  belonged. 

An  assignment  by  a  corporation  needs  not  to  be  authen- 
ticated by  its  corporate  seal,  but  is  properly  executed,  if 
executed  in  the  name  and  by  the  authority  of  the  corpora- 
tion, and  by  a  proper  officer,  who  signs  for  the  corporation, 
and  signs  as  an  officer  thereof.44  An  assignment  to  a  cor- 
poration confers  no  title  upon  any  stockholder  therein ; 45 
and  an  assignment  to  a  corporation,  which  is  not  organized 
till  after  the  date  of  the  assignment,  will,  at  least  by  way 
of  estoppel,  inure  to  its  benefit  when  organized,  and  will 
be  good  as  against  the  assignor.46 

A  married  woman,  an  infant,  or  a  person  under  guard- 
ianship may  be  the  assignee  of  an  invention  or  of  a  pat- 
ent. Such  persons  may  also  assign  their  inventions  or 
patents  by  complying,  not  only  with  the  United  States 
law  which  requires  assignments  of  patents  to  be  in  writing, 
but  also  with  those  laws  of  their  particular  States  which 

41  29  Statutes  at  Large,  p.  693,  44  Gottfried  v.  Miller,  104  U.  S. 
Ch.  391,  Section  5.                              527,  1881. 

42  Fisk,  Clark  &  Flagg  v.  Hoi-  45  Gottfried  v.  MiUer,  104  U.  S. 
lander,    MacArthur   &   Mackay,      528,  1881. 

360,  1883.  46Dyer    v.    Rich,    1    Metcalf 

43  Fresno  Home-Packing  Co.  v.      (Mass.),  180,  1840. 
Fruit-Cleaning  Co.,  101  F.  R.  826, 

1900. 


330  TITLE  [chap.   XI. 

govern  analogous  acts  of  such  persons,  in  reaped  of  other 
personal  property. w 

§276.  An  assignment  i'nv  which  the  consideration  was 
never  paid,  and  which  was  never  acted  upon  by  either  of 
the  parties  thereto,  conveys  no  title  to  the  assignee;48 
but  no  assignment,  which  lias  been  acted  upon  by  the 
parties  thereto,  can  be  revoked  on  the  ground  of  a  partial 
failure  to  pay  the  promised  price.'10  And  total  failure  to 
pay  any  consideration  for  an  assignment,  does  not  derogate 
from  the  rights  of  those  who  take  title  under  it,  without 
any  notice  of  that  failure.50  Where  no  rights  have  accrued 
to  any  third  party  under  an  unrecorded  assignment,  the 
assignee  may  restore  the  title  to  the  assignor,  by  burning 
the  assignment  up,  or  otherwise  completely  destroying 
it,  for  the  avowed  purpose  of  its  cancellation.51 

§  276a.  The  consideration  of  the  validity  or  invalidity, 
under  the  anti-trust  laws,  of  price  and  use  restrictions  on 
patented  articles  and  processes  is  taken  up  in  another 
part  of  this  book.52  There  is,  however,  a  large  class  of 
contracts  consisting  generally  of  those  that  seek  to  impose 
upon  an  inventor  an  obligation  to  assign  to  another  cer- 
tain or  all  inventions  which  he  may  make,  that  have 
received  the  attention  of  courts  of  equity  with  reference 
to  the  common-law  principle  governing  the  validity  of 
contracts  in  restraint  of  trade,  and  also  with  reference  to 
the  equitable  defence  to  suits  for  specific  performance  of 
unconscionableness  of  the  contract  sought  to  be  enforced. 
It  may  be  safely  stated  that  any  contract  which  broadly 

47  Fetter  v.  Newhall,  17  F.  R.  ard,  222,  1856;  Mackaye  v. 
843,  1883.  Mallory,  12  F.  R.  328,  1882. 

48  Railroad  Co.  v.  Trimble,  10  50Piaget      Novelty      Co.     v. 
Wallace,  380,  1870;  Buck  v.  Tim-  Headley,  108  F.  R.  870,  1901. 
omy,  78  F.  R.  488,  1897.  51  Winfrey  v.  Gallatin,  72  M<>. 

49  Hartshorn  v.  Day,  19  How-  App.  191,  1897. 

52  See  Sections  315  et  seq. 


CHAP.    XI. 1  TITLE  331 

obligates  an  inventor  to  assign  without  further  considera- 
tion than  the  mere  payment  of  money  or  the  transfer  of 
property  to  the  inventor,  all  inventions  which  he  may 
make  during  his  lifetime,  is  invalid.53  It  may  be  gathered 
from  the  cases,  however,  that  broadly  speaking,  if  the 
purpose  intended  and  effected  by  the  contract  is  the 
protection  of  the  other's  business  from  advantages  that 
have  or  may  be  gained  by  the  inventor  from  his  relations 
with  the  other,  the  contract  is  not  void.54  It  is  not 
necessary  that  there  be  a  grant  from  the  inventor, 
as  for  instance  the  assignment  of  a  patent  or  a 
business.55 

In  Hulse  v.  Bonsack  Mach.  Co.56  the  court  said: 
"  We  have  seen  the  reason  for  the  adoption  of  this  form 
of  contract  by  the  company.  It  was  to  protect  it  from 
improvements  discovered  by  its  own  servants,  under  its 
pay,  in  cigarette  machines.  The  company  lets  them  into 
an  intimate  knowledge  of  its  cigarette  machines,  affords 
them  the  opportunity  of  discovering  any  needed  improve- 
ments in  them,  gives  them  at  hand  the  means  of  testing 
any  improvements  which  may  suggest  themselves.  Nat- 
urally it  seeks  to  protect  itself  from  an  abuse  of  these  re- 
sults. The  protection  sought  is  a  fair  one  for  the  interests 
of  the  company.  ...  In  the  most  recent  cases  the  va- 
lidity of  contracts  in  partial  restraint  of  trade  is  tested, 
not  by  any  inflexible  rule,  but  by  their  reasonableness 

53  Littlefield  v.  Perry,  21  Wal-  Dement,  164  F.  R.  200,  1908; 
lace,  205,  226,  1874;  Westing-  A.  B.  Dick  Co.  v.  Fuller,  198  F.  R. 
house  Air  Brake  Co.  v.  Chicago  404,  1912;  Thompson  v.  Auto- 
Brake  Mfg.  Co.,  85  F.  R.  786,  matic  Fire  Protector  Co.,  211 
1898.  F.  R.  120,  1914. 

54  Littlefield  v.  Perry,  21  Wal-  55  Lion  Tractor  Co.  v.  Bull 
lace,  205,  226,  1874;  Hulse  v.  Bon-  Tractor  Co.,  231  F.  R.  156,  1916. 
sack  Mach.  Co.  (and  cases  cited),  56  Hulse  v.  Bonsack  Mach.  Co., 
65  F.  R.  864,  1895;  Fairchild  v.  65  F.  R.  864,  1895. 


332  TITLE  [CHAP.    XI. 

when  considered  in  connection  with  the  protection  neces- 
sary for  the  particular  business  and  the  modern  methods 
of  conducting  the  enterprise." 

In  line  with  the  general  principle  stated,  a  contract  by 
an  inventor  to  assign  all  inventions  already  made  by  him 
as  well  as  all  future  inventions  which  he  may  make  for  an 
indefinite  period  relating  to  the  same  subject-matter,  is 
valid.57  If  the  assignee  has  acquired  or  is  to  acquire  the 
prior  invention  it  is  proper  for  him  to  protect  himself 
against  the  acquisition  by  his  rivals  of  improvements. 
And  so  a  contract  of  employment  which  provides  that  the 
employee  shall  assign  to  the  employer  all  inventions 
made  during  the  term  of  the  employment  which  relate 
to  specified  articles  manufactured  by  the  employer,  is 
valid.58  And  the  contract  will  be  enforced  with  respect 
to  an  invention  which  relates  both  to  the  specified  articles 
and  other  articles,  but  only  so  far  as  it  concerns  the  speci- 
fied articles.59  A  contract  to  assign  inventions  to  a  cor- 
poration formed  or  to  be  formed  by  the  inventor  and  others 
for  the  purpose  of  carrying  on  a  business  to  which  the  in- 
ventions specified  relate,  is  valid  and  will  be  specifically 
enforced.60  The  assignment  of  a  patent  by  an  agreement 
which  provides  for  the  assignment  of  all  future  improve- 
ments thereon  to  be  made  by  the  patentee  is  valid,  for 
without  the  improvements  the  value  of  the  basic  patent 
might  be  wholly  destroyed.61  An  interest  of  the  inventor 
in  the  future  profits  of  a  corporation  or  partnership  is 

57  Reece  Folding  Machine  Co.  60  Davis  &  Roesch  Temperature, 
v.  Fenwick,  140  F.  R.  287,  1905;  etc.  Co.  v.  Tagliabue,  148  F.  R. 
A.  B.  Dick  Co.  v.  Fuller,  198  F.  R.  705,  1906;  Fairchild  v.  Dement, 
404,  1912.  164  F.  R.  200,  1908. 

58  Lion  Tractor  Co.  v.  Bull  Trac-  61  Westinghouse  Air  Brake  Co. 
tor  Co.,  231  F.  R.  156,  1916.  v.  Chicago  Air  Brake  &  Mfg.  Co., 

59  Wright    v.    Vocalion    Organ  85  F.  R.  786,  1898. 
Co.,  148  F.  R.  209,  1906. 


CHAP.    XI. J  TITLE  333 

also  sufficient  to  sustain  the  validity  of  such  a  con- 
tract.62 

In  A.  B.  Dick  Co.  v.  Fuller63  it  was  urged  that  the  con- 
tract of  assignment  of  future  inventions  was  invalid  be- 
cause it  covered  all  inventions  relating  to  the  subject- 
matter  of  certain  patents  assigned  and  was  not  confined 
to  improvements.  The  court,  however,  held  that  if  the 
contract  were  construed  as  confined  to  such  inventions, 
improvements  or  otherwise,  as  bore  some  relation  to  the 
processes  already  assigned,  the  contract  was  valid  and 
stated  that  the  same  reasoning  which  would  sustain  the 
validity  of  a  contract  to  assign  future  improvements  would 
apply  to  such  a  contract  as  the  one  in  question,  namely, 
that  the  future  inventions,  while  they  might  not  be  im- 
provements, would  nevertheless  form  a  possible  basis  for 
hostile  competition.  Indeed  it  would  seem  that  the  reason 
was  all  the  more  forcible  in  the  case  of  such  a  contract. 
The  ownership  by  a  stranger  of  the  improvement  could 
not  be  the  basis  of  hostile  competition  during  the  life 
of  the  basic  patent,  but  could  only  prevent  the  use  of 
the  improvement  by  the  owner  of  the  basic  patent.  A 
patented  invention  for  a  similar  purpose  as  that  of  the 
basic  patent  but  not  in  the  nature  of  an  improvement 
could  be  utilized  with  perfect  freedom  by  one  acquiring 
it  and  thus  be  a  source  of  competition  to  the  owner  of  the 
basic  patent.  It  should  be  noted  that  in  the  A.  B.  Dick 
Co.  case  above  referred  to  the  court  considered  the  valid- 
ity of  a  contract  to  assign  all  inventions  affecting  inven- 
tions or  improvements  in  any  article  made  by  the  assignee, 
but  as  the  question  was  not  involved  did  not  pass  upon  it. 

§  277.  Rights  of  action  for  past  infringements  of  a  pat- 
ent are  not  conveyed  by  any  mere  assignment  of  that 

02  Aspinwall  Mfg.  Co.  v.  Gill,  «  A.  B.  Dick  Co.  v.  Fuller,  198 
32  F.  R.  697,  1887.  F.  R.  404,  1912. 


334  TITLE  [chap.  XI. 

patent;64  but  they  may  be  conveyed  by  any  assignment 
which  purports  to  convey  them,  whether  that  document 
purports  also  to  convey  the  patent,05  or  purports  to  convey 
the  rights  of  action  alone.66 

§  278.  The  construction  of  assignments  depends  pri- 
marily upon  the  meaning  of  all  the  language  in  which  they 
are  composed,  rather  than  upon  that  of  any  particular 
words  they  contain;67  and  if  that  language  is  clear  in  the 
eye  of  the  law,  its  effect  cannot  be  varied  by  any  parol 
evidence;68  but  if  that  language  is  ambiguous,  it  may  be 
construed  in  the  light  of  certain  classes  of  parol  proof. 
The  parties  will  never  be  permitted  to  testify  what  they 
intended  to  signify  by  the  language  they  used,  because 
if  they  were,  assignors  might  narrow,  and  assignees  might 
widen,  the  scope  of  the  rights  conveyed,  by  simply  making 
oath  to  alleged  former  states  of  their  own  minds.  Per- 
jury could  seldom  be  detected  in  such  a  case,  and  such  a 
rule  would  put  property  at  the  mercy  of  avarice.  Nor 
is  any  evidence  admissible  which  merely  shows  that  one 
of  the  parties  to  an  assignment  made  such  declarations,  or 
did  such  acts,  in  pursuance  of  that  assignment,  as  indicate 
that  he  understood  the  document  in  a  sense  most  favorable 
to  himself.  If  such  evidence  were  admissible,  the  honest 
mistake  of  an  assignor,  in  construing  his  contract,  would 
often  deprive  an  assignee  of  rights  which  he  had  honestly 
bought ;  and  the  honest  mistake  of  an  assignee  would  often 

64  Moore  v.  Marsh,  7  Wallace,  &  Ard.  160,  1877;  Jones  v.  Berger, 

515,  1868;  May  v.  County  of  Ju-  58  F.  R.  1007,  1893. 

neau,  30  F.  R.  245,  1887;  Koala-  66  Hayward  v.  Andrews,  12  F.  R. 

type  Co.  v.  Hoke,  30  F.  R.  444,  786,  1882. 

1887;  May  v.  County  of  Saginaw,  67  Washburn  v.  Gould,  3  Story, 

32    F.    R.    629,    1888;    Superior  122,  1S44. 

Drill  Co.  v.  Ney  Mfg.   Co.,  98  BS  Railroad  Co.  v.  Trimble,  10 

F.  R.  734,  1899.  Wallace,  367,  1870;  Ralya  v.  At- 

95  Hamilton  v.  Rollins,  3  Bann.  kins,  157  Ind.  336,  1901. 


CHAP.    XI. |  TITLE  335 

deprive  an  assignor  of  rights  which  he  never  had  sold.  But 
parol  evidence  is  admissible  to  construe  an  ambiguous 
assignment,  if  that  evidence  shows  the  existence  of  such 
collateral  documents,  or  surrounding  circumstances,  at- 
tending the  execution  of  that  assignment,  as  throw  light 
upon  the  meaning  of  its  words; 69  or  show  that  both  parties 
to  that  assignment,  practically  construed  it,  after  its  execu- 
tion, and  in  so  doing  construed  it  alike.70  If  ambiguities 
still  remain  in  an  assignment,  after  all  other  recognized 
methods  of  solving  them  have  been  employed,  they  are  to 
be  solved  against  the  grantor,  in  a  suit  between  him  and  the 
grantee,  or  their  respective  privies,  as  he  is  supposed  to 
have  written  the  document,  and  therefore  to  be  chargeable 
with  the  obscurity;71  but  as  between  the  grantee  or  his 
privies,  and  strangers  to  the  assignment,  ambiguities  in 
such  cases  are  solved  against  the  grantee.72 

§  279.  Reformation  of  an  assignment  may  be  had  by 
means  of  a  bill  in  equity  filed  for  that  purpose,  if  that 
assignment  does  not  conform  to  the  mutual  intention  of 
the  parties  to  its  execution;  but  neither  party  can  secure 
such  reformation  on  proof  of  what  his  intention  was,  un- 
less he  also  proves  that  the  intention  of  the  other  party 
was  the  same.73  But  no  reformation  of  an  assignment 
can  affect  the  right  of  any  innocent  purchaser,  for  a  valua- 

69  Read  v.  Bowman,  2  Wallace,  St.   409,    1854;  Levy  v.   Dattle- 

591,   1864;  Phelps  v.  Classen,   1  baum,  63  F.  R.  994,  1894. 

Woolworth,  212,  1868;  Wetherill  71  Smith   v.   Selden,    1   Blatch. 

v.  Zinc  Co.,  6  Fisher,  50,  1872;  475,  1849;  May  v.  Chaffee,  2  Dil- 

Lowry  v.  Cowles  Co.,  56  F.  R.  Ion,  385,  1871;  Falley  v.  Giles,  29 

492,  1893,  and  68  F.  R.  366,  1895.  Indiana,  114,  1867;  Keith  v.  En- 

7°Topliff  v.  Topliff,  122  U.  S.  gineering  Co.,  136  Cal.  181,  1902. 

131,  1886;  Wilcoxen  r.  Bowles,  1  72  Levy  v.  Dattlebaum,  63  F.  R. 

Louisiana  An'l,  230,  1S46;  Parrott  994,  1894. 

v.  Wikoff,  1  Louisiana  An'l,  232,  "3  Downton  v.  Allis,  9  F.  R.  771, 

1846;  Coleman  v.  Grubb,  23  Penn.  1881. 


336  TITLE  [('HAP.    XI. 

ble  consideration,  who  had  no  notice,  at  the  time  of  his 
purchase,  that  the  mutual  intention  of  the  parties  was 
different  from  the  assignment  which  passed  between 
them.74  Where  several  patents  are  sold,  but  one  of  them 
is  omitted  by  mistake  from  the  assignment  which  was 
intended  to  convey  them  all;  the  assignee  has  an  equitable 
right  to  have  the  assignment  reformed,  so  as  to  convey 
the  omitted  patent,  and  that  equitable  right  is  transferable 
from  him,  in  the  same  ways  in  which  other  equitable 
rights  in  patents  may  be  transferred.75 

§  280.  No  extension  of  a  patent  is  conveyed  by  an  as- 
signment of  the  first  term  thereof.76  Nor  is  any  extension, 
which  is  not  provided  for  by  the  general  law  when  an 
assignment  is  made,  covered  by  the  word  " renewal" 
in  such  an  assignment.  In  such  a  case,  that  word  is  held 
to  mean  "reissue  "  and  not  to  mean  " extension."  77  But 
if,  at  the  time  such  an  assignment  is  made,  the  patent 
statutes  do  provide  for  extensions  of  patents  of  the  class 
to  which  the  assigned  patent  belongs,  then  the  word 
" renewal"  is  a  sufficient  word  to  convey  such  an  exten- 
sion.78 An  assignment  of  an  invention,  without  limitation 
or  qualification,  will  convey,  not  only  the  original  term, 
but  also  any  Patent  Office  extension,  of  the  patent  granted 
for  that  invention.79  Whether  such  an  assignment  will 
convey  any  Congressional  extension  is  an  undecided  point. 
An  affirmative  decision  upon  it  will  not  necessarily  fol- 
low the  rule  in  Hendrie  v.  Sayles,  but  it  is  not  improbable 

74  Gibson  v.  Cook,  2  Blatch.  149,  "  Wilson  v.  Rousseau,  4  How- 
1850;    Woodworth    v.    Cook,    2      ard,  646,  1846. 

Blatch.  151,  1850.  78  Pitts  v.  Hall,  3  Blatch.  201, 

75  Newton  v.  Buck,  77  F.  R.  614,  1854;  Goodyear  v.  Cary,  4  Blatch. 
1896.  303,    1859;   Chase  v.  Walker,   3 

76  Wilson  v.  Rousseau,  4  How-  Fisher,  122,  1866. 

ard,  646,  1846.  79  Hendrie  v.  Sayles,  98  U.  S. 

554,  1878. 


CHAP.    XI. |  TITLE  337 

that  the  courts  will  take  the  step  required  to  pass  from 
the  one  doctrine  to  the  other,  whenever  the  question 
arises. 

§  281.  Recording  in  the  Patent  Office,  within  three 
months  after  its  date,  is  necessary  to  the  validity  of  an 
assignment  or  grant  of  a  patent  as  against  any  subsequent 
purchaser  or  mortgagee,  for  a  valuable  consideration, 
without  notice.80  This  statutory  provision  operates  to 
give  constructive  notice  to  subsequent  purchasers  and 
mortgagees,  of  the  assignments  which  are  duly  recorded 
thereunder;  but  it  does  not  apply  to  any  assignment  ex- 
ecuted prior  to  the  granting  of  letters  patent,  unless  that 
assignment  is  one  upon  which  a  patent  is  to  be  issued  to 
the  assignee,  and  also  identifies  with  certainty  the  inven- 
tion conveyed  thereby.81  Nor  is  an  instrument  which 
does  not  purport  to  convey  any  existing  interest  in  any 
patent  or  application  an  " assignment,  grant  or  convey- 
ance" within  the  meaning  of  the  statute,  and  consequently 
the  recording  of  such  an  instrument  does  not  operate  as 
constructive  notice  to  subsequent  purchasers  of  the  legal 
title.82  But  where  an  assignment  conveys  a  patent,  and 
also  conveys  all  improvements  that  the  assignor  may 
thereafter  make  on  the  invention  claimed  therein,  the  due 
recording  of  that  assignment  operates  to  give  constructive 
notice  of  the  sale  of  that  patent,  and,  it  has  been  held,  of 
the  sale  of  those  improvements.83  The  correctness  of 
the  proposition  that  such  an  assignment  is  constructive 

80  Revised  Statutes,  Section  v.  New  Columbus  Watch  Co.,  129 
4898.  F.  R.  114,  1904. 

81  Wright  v.  Randel,  8  F.  R.  599,  S3  Aspinwall  Mfg.  Co.  v.  Gill,  32 
1881 ;  New  York  Paper  Bag  Co.  v.  F.  R.  701,  1887;  Westinghouse 
Union  Paper  Bag  Co.,  32  F.  R.  Air-Brake  Co.  v.  Chicago  Brake 
788,  1887.  &  Mfg.  Co.,  85  F.  R.  792,  1898. 

82  National  Cash  Register  Co.  See  Davis  &  Roesch,  etc.,  Co.  v. 

Tagliabue,  150  F.  R.  372,  1906. 


338  TITLE  [chap.    XI. 

notice  of  the  sale  of  improvements  which  may  thereafter 
be  made  is  somewhat  doubtful.81  The  provision  of  Sec- 
tion 4898  of  the  Revised  Statutes,  relevant  to  recording 
assignments  of  patents,  does  not  apply  to  those  convey- 
ances, by  operation  of  law,  of  the  patents  and  patent  rights 
of  bankrupts,  to  trustees  in  bankruptcy,  which  are  pro- 
vided for  by  the  bankrupt  law  of  1898; 85  any  more  than 
it  did  to  the  corresponding  conveyances,  which  were  pro- 
vided for  by  the  bankrupt  law  in  the  Revised  Statutes.86 
Neither  does  that  provision  apply  to  any  assignment  which 
conveyed  accrued  rights  of  action  only.87  In  such  a  case, 
the  assignee,  in  order  to  protect  his  right,  should  give 
the  infringer  notice  of  the  assignment;  so  that  if  the  in- 
fringer afterward  pays  the  assignor,  or  pays  some  subse- 
quent assignee,  for  that  right  of  action,  he  will  do  so  at  his 
peril,  and  will  not  discharge  his  liability  to  the  first  as- 
signee.88 Recording  an  assignment  of  a  patent  is  not  nec- 
essary to  its  validity,  as  between  the  parties  to  that 
assignment ; 89  nor  as  against  an  infringer  of  the  patent ; 90 

84  Eastern  Dynamite  Co.  v.  Sneed  (Tenn.),  330,  1853;  Loomis 
Keystone  Powder  Mfg.  Co.,  164  v.  Loomis,  26  Vermont,  198,  1854; 
F.  R.  47,  1908.  Murdock  v.  Finney,  21  Missouri, 

85  30  Statutes  at  Large,  p.  565,  138,  1855;  Mc Williams  v.  Webb, 
Ch.  541,  Section  70.      See  Bank-  32  Iowa,  577,  1871. 

ruptcy  Act  of  1910,  Section  8,  36         89  Holden    v.    Curtis,    2    New 
Statutes,  838.  Hampshire,  61, 1819;  Case  v.  Red- 
s'' Prime  v.  Mfg.  Co.,  16  Blatch.  field,  4  McLean,  527,  1849;  Black 
456,  1879.  v.  Stone,  33  Alabama,  327,  1858; 

87  Gear  v.  Fitch,  3  Bann.  &  Ard.  Moore  v.  Bare,  11  Iowa,  198, 1860; 
573,  1878.  Turnbull  v.  Plow  Co.,  6  Bissell, 

88  Woodbridge  v.  Perkins,  3  Day  229,  1874. 

(Connecticut),   364,    1809;   Van-  *>  Brooks  v.  Byam,  2  Story,  525, 

buskirk  v.  Hartford  Fire  Insurance  1843;  Pitts  v.  Whitman,  2  Story, 

Co.,  14  Connecticut,  144,   1841;  609, 1843;  Boyd  a.  M'Alpin,  3Mc- 

Campbell  v.   Day,    16   Vermont,  Lean,  427,  1844;  Case  v.  Redfield, 

558,   1844;  Clodfelter  v.  Cox,   1  4  McLean,  526,  1849;  McKernan 


CHAP.    XI.  |  TITLE  339 

nor  as  against  an  innocent  purchaser  for  a  valuable  con- 
sideration without  notice,  who  takes  his  assignment  within 
three  months  after  the  date  of  the  prior  unrecorded  as- 
signment;91 nor  as  against  any  subsequent  purchaser 
who  had  actual  notice  thereof,  when  purchasing;92  nor 
as  against  any  subsequent  purchaser  who  paid  no  valuable 
consideration  for  the  assignment  which  he  took.93  A 
merely  good  consideration  will,  therefore,  not  support 
an  assignment  as  against  any  prior  unrecorded  assign- 
ment of  the  same  patent,  given  for  a  valuable  considera- 
tion. 

The  notice  which  will  protect  a  prior  unrecorded  assign- 
ment, against  a  subsequent  assignment  for  a  valuable 
consideration,  may  be  actual,  or  it  may  be  constructive 
only.  Such  constructive  notice  may  be  based  on  any 
fact  within  the  knowledge,  or  means  of  knowledge,  of  the 
purchaser  of  the  unrecorded  assignment,  and  which  fact 
should  logically  lead  him,  upon  inquiry,  to  a  knowledge  of 
the  existence  and  purport  of  that  assignment  itself.94 
For  example,  such  constructive  notice  may  be  based  on  any 
statement  of  fact  of  that  kind,  which  is  in  any  paper  in 
the  chain  of  title  through  which  the  subsequent  assignee 
derives  his  own  claim.95  And  such  constructive  notice 
may  be  based  on  the  fact  that  the  subsequent  assignee 
was  informed,  at  the  time  of  his  purchase,  that  the  prior 
assignee  was  making,  using,  or  selling  specimens  of  the 

v.    Hite,    6   Indiana,   428,    1855;  Blatch.    295,    1871;    Ashcroft   v. 

Sone  v.  Palmer,  28  Missouri,  539,  Walworth,  1  Holmes,  152,  1872. 

1859.  93  Saxton  v.  Aultman,  15  Ohio 

91  Gibson  v.  Cook,  2  Blatch.  144,  State,  471,  1864. 

1850.  94  Westinghouse  Air-Brake  Co. 

92  Peck  v.  Bacon,  18  Connect-  v.  Chicago  Brake  &  Mfg.  Co.,  85 
icut,  377, 1847;  Continental  Wind-      F.  R.  796,  1898. 

mill  Co.  v.  Empire  Windmill  Co.,  8  96  Jonathan  Mills  Mfg.  Co.   v. 

Whitehurst,  72  F.  R.  501,  1896. 


340  TITLE  [CHAP.    XI. 

invention  covered  by  the  patent  involved.  For  such 
making,  using,  or  selling  is  such  a  possession  of  the  in- 
vention, as  charges  all  purchasers  who  are  cognizant 
thereof,  with  notice  of  whatever  title  the  maker,  user,  or 
seller  may  possess.90  Whether  such  constructive  notice 
may  also  be  based  on  the  fact  that  the  subsequent  pur- 
chaser was  a  corporation  in  which  the  assignor  was  :i 
director,  is  a  question  upon  which  the  precedents  are  now 
opposing.97  Where  title  has  once  vested  in  a  subsequent 
purchaser,  for  a  valuable  consideration,  without  notice 
of  a  prior,  unrecorded  assignment  more  than  three  months 
old;  that  title  becomes  absolute  and  may  be  purchased 
by  persons  who  had  actual  knowledge  of  the  prior  assign- 
ment.98 If  this  rule  were  otherwise,  titles  thus  derived 
might  become  valueless  for  want  of  qualified  purchasers.99 
The  foregoing  parts  of  this  section  contemplate  cases 
where  the  things  covered  by  several  assignments  of  the 
same  assignors,  are  unquestionably  identical;  and  where 
there  is  no  ground  for  controversy  relevant  to  the  re- 
spective dates  of  the  conflicting  transactions.  Where 
either  or  both  of  these  circumstances  are  otherwise,  other 
points  of  law  will  also  arise.  Where,  for  example,  the  sub- 
sequent assignment  purported  to  convey  no  more  than  the 
right,  title,  and  interest  of  the  assignor,  in  the  specified 
patent,  that  assignment  can  never  prevail  against  any 
prior  unrecorded  assignment  which  left  any  interest  in  the 

96  Prime  v.  Mfg.  Co.,  16  Blatch.  9S  Wright  v.  Randel,  8  F.  R.  599, 
455,  1879;  Dueber  Watch  Case  1881;  National  Heeling-Mach. 
Co.  v.  Dalzell,  38  F.  R.  597,  1889.  Co.    v.    Abbott,    70    F.    R.    55, 

97  Continental  Windmill  Co.  v.  1895. 

Empire  Windmill  Co.,  8  Blatch.  "Varick    v.    Briggs,    6    Paige 

295,  1871;  Cutter  Co.  v.  Sheldon,  (N.  Y.),  329,  1837;  Empire  State 

10  Blatch.  1,  1872;  Davis  Wheel  Nail  Co.  v.  Faulkner,  55  F.  R. 

Co.  v.  Davis  Wagon  Co.,  20  F.  R.  824,  1893. 
700,  1884. 


CHAP.    XI.]  TITLE  341 

assignor;  10°  if  indeed  it  can  prevail  against  one  which 
left  no  such  interest.101 

The  date  of  an  assignment  is  the  day  of  its  delivery, 
and  not  the  date  which  appears  upon  its  face,  if  the  latter 
differs  from  the  former;  102  and  the  three  months  within 
which,  after  that  date,  an  assignment  is  required  to  be 
recorded,  are  calendar  months.103 

§  282.  Warranty  of  title  is  implied  in  every  assignment 
of  a  patent  right;  unless  that  assignment  purports  to 
convey  merely  the  right  of  the  assignor;  or  unless  it  is 
otherwise  limited  to  narrower  ground  than  the  entire 
patent  right  which  it  describes.  Every  such  assignment 
will  therefore  transfer  whatever  title  the  assignor  may 
subsequently  acquire  by  purchase  or  otherwise.104  But  an 
assignment  of  the  right,  title,  and  interest  of  the  assignor 
without  anything  more,  will  not  operate  to  convey  any 
title  which  is  subsequently  acquired  by  him.105 

§  283.  No  warranty  of  validity  is  implied  in  any  assign- 
ment of  a  patent  right.  If  the  assignor  knows  the  patent 
to  be  invalid,  at  the  time  he  makes  the  assignment,  he  is 
guilty  of  fraud,  and  the  assignee  may  have  relief  against 
him,  on  that  ground ;  but  if  both  parties  are  equally  inno- 
cent of  knowledge  of  invalidity,  the  loss  consequent  on  any 

100  Brown  v.  Jackson,  63  Wheat-  103  Guaranty  Trust  Co.  v. 
on,  449,  1818;  Ashcroft  v.  Wal-  Railroad  Co.,  139  U.  S.  145, 
worth,  1  Holmes,  152, 1872;  Turn-      1890. 

bull  v.  Plow  Co.,  6  Bissell,  230,  104  Sherman       v.       Champlain 

1874;  Regan  Vapor  Engine  Co.  v.  Transportation  Co.,  31  Vt.  175, 

Pacific   Gas   Engine   Co.,  47   F.  1858;  Faulks  v.  Kamp,  17  Blatch. 

R.  513,  1891.  433,  1880;  Brush  Electric  Co.  v. 

101  Oliver  v.  Piatt,  3  Howard,  California  Electric  Light  Co.,  52 
363,  1845;  May  v.  Le  Claire,  11  F.  R.  963,  1892. 

Wallace,  232,  1870.  105  Perry  v.  Corning,  7  Blatch. 

102  Dyer    v.    Rich,    1    Metcalf      195,  1870. 
(Mas*.),  180,  1840. 


342  TITLE  [chap.   XI. 

invalidity  afterward  brought  to  light,  must  fall  upon  the 
then  owner  of  the  patent.""1 

Some  State  courts  have  held  that,  when  sued  by  an  as- 
signor for  the  purchase  price  of  a  patent,  any  assignee 
may  defend  on  any  ground  of  invalidity  which  he  can 
prove  to  exist.  This  view  is  based  on  the  theory  that  in 
such  a  case  there  is  a  failure  of  consideration.  This  theory 
is  not  correct,  because  an  assignor  may  lose,  and  an  as- 
signee may  gain  as  much  on  account  of  the  assignment  of 
an  invalid  patent  as  on  account  of  a  valid  one.  An  as- 
signment of  an  invalid  patent  is  a  sufficient  consideration 
to  support  a  promissory  note,  in  any  case  where  there  is 
neither  warranty  nor  fraud.107  To  allow  an  assignee,  who 
has  made  profit  from  the  patent  assigned,  to  defend  against 
a  suit  for  the  promised  price,  on  the  ground  of  some  de- 
fect he  has  been  able  to  discover  in  the  patent,  would  be 
unjust.108  Such  a  rule  might  enable  an  assignee  to  reap 
enormous  gains  from  practically  exclusive  rights,  and  then 
to  avert  payment  for  those  rights,  on  some  far-fetched 
ground  of  invalidity,  which  never  for  one  moment  had 
disturbed  his  exclusive  possession  of  the  patented  privilege. 
Even  where  an  assignee  is  not  shown  to  have  derived  any 
benefit  from  the  assignment  of  a  particular  patent,  he 
ought  not  to  be  permitted  to  defend  against  a  suit  for  the 
price  he  promised  to  pay  therefor;  because  that  assign- 
ment operated,  at  least  to  prevent  the  assignor  from  mak- 
ing, using,  or  selling  specimens  of  the  patented  thing.  It 
is  perfectly  well  settled  that  loss  or  disadvantage  to  the 
promisee,  is  a  sufficient  consideration  to  support  a  con- 

106  Hiatt  v.   Twomey,    1   Dev-  107  Thomas  v.  Quintard,  5  Duer 

ereux   &   Battle's   Equity   Cases  (N.  Y.),  80,  1855. 
(N.    C),   315,    1836;   Cansler  v.  m  Milligan  v.  Mfg.  Co.,  21  F.  R. 

Eaton,    2    Jones'    Equity    Cases  570,  1884. 
(N.  C),  499,  1856. 


CHAP.    XI. j  TITLE  343 

tract,  even  where  that  contract  resulted  in  no  benefit 
to  the  promisor.109 

§  284.  Express  warranties  of  validity  may  be  incorpo- 
rated in  assignments  of  patents;  and  where  so  incorpo- 
rated, they  will  subject  assignors  to  actions  for  damages, 
if  the  patents  assigned  are  found  to  be  in  fact  invalid.11" 
Parol  warranties  of  validity,  when  they  accompany  writ- 
ten assignments  of  patents,  are  inadmissible  as  founda- 
tions for  actions  for  damages  based  on  alleged  invalidity 
of  those  patents;  m  but  such  parol  statements  may  be  ad- 
missible as  aiding  to  prove  fraud,  in  a  case  where  other 
evidence  shows  that  the  assignor  knew  the  patent  to  be 
invalid  when  he  made  the  assignment.112  In  such  a  case, 
however,  the  assignee's  right  of  action  rests  upon  the  fraud 
and  not  upon  the  parol  warranty.113 

§  285.  Equitable  titles  to  patent  rights  may  arise  in 
different  ways.  Such  a  title  accrues  to  an  assignee  when  a 
patent  is  granted  to  an  inventor,114  or  to  a  subsequent 
assignee  chargeable  with  notice,115  for  an  invention  made 
or  completed  or  patented,  after  the  execution  of  an  as- 
signment adapted  to  convey  it;  and  a  document  which 
conveys  a  patent,  and  which  also  purports  to  convey  all 
improvements  on  the  invention  covered  thereby,  which 
may  thereafter  be  made  by  the  assignor,  is  an  example 

109  Parsons  on  Contracts,  Book  113  Rose  v.  Hurley,  39  Indiana, 

2,  Ch.  1,  Section  2.  78,  1872. 

no  Wright  v.  Wilson,  11  Rich-  114  Littlefield  v.  Perry,  21  Wal- 

ardson  (S.  C.  Law  Reports),  151,  lace,  226,  1874;  Nesmith  v.  Cal- 

1856.  vert,  1  Woodbury  &  Minot,  34, 

111  Van  Ostrand  v.  Reed,  1  Wen-  1845;  Continental  Windmill  Co. 
dell  (N.  Y.),  432,  1828;  Jolliffe  v.  Empire  Windmill  Co.,  8  Blatch. 
v.     Collins,    21    Missouri,    341,  295,  1871. 

1855.  See  Section  274. 

112  McClure  v.  Jeffrey,  8  In-  115  Pontiac  Boot  Co.  v.  Merino 
diana,  83,  1856.                                  Shoe  Co.,  31  F.  R.  286,  1887. 


344  TITLE  [('HAP.    XI. 

of  such  an  assignment.1"''  An  improvement  on  an  inven- 
tion covered  by  a  patent,  may  be  an  addition  thereto, 
which  is  adapted  to  increase  its  value.  Or  it  may  be  a 
substitute  therefor,  which  is  adapted  to  supplant  it  en- 
tirely, by  performing  its  function  more  efficiently  or  more 
inexpensively.117 

An  equitable  title  accrues  to  an  inventor  when  a  patent 
is  granted  to  his  assignee,  in  pursuance  of  an  assignment, 
which  was  accompanied  by  a  contract  providing  that  the 
assignee  should  pay  to  the  inventor  all  or  some  portion 
of  the  proceeds  of  the  patent.118  Such  a  title  accrues  to 
an  assignee  of  a  term  for  years,  in  a  patent  right,  if  that 
term  is  limited  to  expire  before  the  expiration  of  the  exist- 
ing term  of  the  patent.119  Such  a  title  accrues  to  a  consoli- 
dated corporation  in  patents  owned  by  its  constituent 
corporations.120  Such  a  title  accrues  to  an  employer, 
where  an  employee  makes  an  invention  in  pursuance  of 
a  contract  to  invent  for  that  employer;121  but  in  order 
that  the  employer  may  acquire  such  title  the  employment 
must  be  specifically  for  the  purpose.121"  Such  a  contract 
may  be  an  oral  one,  and  not  be  within  the  statute  of 
frauds.122  And  such  a  title  will  doubtless  arise  out  of  any 
contract  which  purports  to  give  a  person  a  beneficial 

"•  Aspinwall  Mfg.  Co.  v.  Gill,  32  New  Haven  Electric  Co.,  35  F.  R. 

F.  R.  699,  1887.  236,  1888. 

See  Section  592,  post.  m  Bonsack  Mach.  Co.  v.  Hulse, 

117  Westinghouse  Air-Brake  Co.  57  F.  R.  523,  1893;  Hulse  v.  Bon- 

v.   Chicago  Brake  &   Mfg.   Co.,  sack  Mach.  Co.,  65  F.  R.  864, 

85  F.  R.  790,  1898.  1894. 

U8Sayles  v.  Dubuque  &  Sioux  121<I  Johnson  Furnace  &  En- 
City  Railroad  Co.,  5  Dillon,  563,  gineering  Co.  v.  Western  Furnace 
1878.  Co.,  178  F.  R.  819,  1910. 

119  Cook  v.  Bidwell,  8  F.  R.  452,  122  Dalzell  v.  Dueber  Mfg.  Co., 
1881.  149  U.  S.  320,  1893. 

120  Edison  Electric  Light  Co.  v. 


CHAP.   XI.]  TITLE  345 

interest  in  a  patent  right;  but  which  does  not  amount  to 
an  assignment  or  grant  of  legal  title,  nor  to  a  license  to 
make,  to  use,  or  to  sell  the  invention.  So  also,  any  facts 
which  would  create  a  constructive  or  a  resulting  trust, 
if  they  related  to  other  kinds  of  intangible  personal  prop- 
erty, will  doubtless  have  the  same  effect  upon  property 
in  patents  when  they  relate  thereto.  And  finally,  an 
equitable  title  may  arise  to  unspecified  persons,  when  a 
patent  is  assigned  to  some  specified  person  as  trustee, 
without  any  statement  in  the  assignment,  of  the  character 
of  the  trust,  or  of  the  identity  of  the  beneficiaries  thereof.123 
In  such  a  case,  both  those  points  can  be  established  by 
parol  evidence,  and  the  equitable  title  of  the  beneficiaries 
may  thereupon  be  enforced  against  the  trustee.124 

§  286.  In  whatever  way  an  equitable  title  to  a  patent 
right  may  have  arisen,  it  can  be  translated  into  a  legal 
title  in  a  proper  case,125  by  means  of  a  bill  for  specific 
performance  of  contract  or  other  action  in  equity;126  and 
where  no  affirmative  relief  is  sought  by  the  holder  of  an 
equitable  title  to  a  patent,  such  a  title  will  be  upheld  by 
a  court  of  equity,  as  against  all  claims  made  under  the 
naked  legal  title.127  But  if  the  holder  of  the  legal  title  as- 
signs the  patent  to  a  purchaser  for  a  valuable  considera- 
tion, without  notice  of  the  equitable  title,  such  a  purchaser 
will  take  the  entire  ownership  of  the  patent,  freed  from  the 
prior  equitable  encumbrance.128    One  district  judge  has 

123  National  Heeling-Mach.  Co.  m  Hapgood  v.  Rosenstock,  23 
v.  Abbott,  70  F.  R.  54,  1895.  F.  R.  87,  1885;  New  York  Paper 

124  Railroad  Co.  v.  Durant,  95  Bag  Machine  Co.  v.  Union  Paper 
U.  S.  576,  1877.  Bag  Machine  Co.,  32  F.  R.  783, 

125  Kennedy   v.   Hazelton,    128  1887. 

U.   S.   667,    1888;   Westinghouse  127  Cook    v.    Sterling    Electric 

Air-brake  Co.  v.  Chicago  Brake  Co.,  118  F.  R.  47,  1902. 

&    Mfg.    Co.,    85    F.    R.    796,  128  Hendrie  v.  Sayles,  98  U.  S. 

1898.  549,  1878. 


346  TITLE  [chap.   XI. 

decided  this  point  the  other  way,  holding  that  the  maxim 
caveat  emptor  applies  to  such  a  case.129  But  that  decision 
was  rendered  before  that  in  Hendrie  v.  Sayles;  and  was 
made  in  evident  forgetfulness  of  the  really  applicable 
maxim  that,  "between  equal  equities  the  law  will  prevail;" 
and  of  the  well-established  doctrine,  that,  if  a  purchaser 
for  a  valuable  consideration,  without  notice  of  a  prior 
equitable  right,  obtains  a  legal  title  at  the  time  of  his 
purchase,  he  will  be  entitled  to  priority  in  equity,  as  well 
as  in  law.130  The  maxim  of  caveat  emptor  applies  where  a 
seller  has  no  title  whatever.131  When  a  seller  has  the 
legal  title,  but  not  the  equitable,  then  the  other  maxim 
governs  the  rights  of  assignees.  But  the  first  of  two  purely 
equitable  assignments  will  prevail  over  the  second,  whether 
the  taker  of  the  second  had  notice  of  the  other  or  not.132 
§  287.  A  grant,  from  one  person  to  another,  of  a  patent 
right,  is  a  conveyance  in  writing  of  the  entire  right,  or  of 
an  undivided  interest  therein,  within  and  throughout  a 
certain  specified  portion  of  the  territory  of  the  United 
States.133  The  title  to  the  subject-matter  of  letters  patent 
is  not  divisible  in  any  other  category  than  a  territorial 
one;134  and  therefore  grants  cannot  be  made  to  convey 
one  of  several  inventions  covered  by  a  patent;135  nor  to 
convey  an  exclusive  right  to  make,  use  and  sell  a  patented 

129  Consolidated  Fruit  Jar  Go.         133  Gayler  v.  Wilder,  10  Howard, 

v.  Whitney,  2  Bann.  &  Ard.  385,  494, 1850;  Moore  v.  Marsh,  7  Wal- 

1876.  lace,    521,     1868;    Littlefield    v. 

130Bispham's      Principles      of  Perry,  21  Wallace,  219,  1874. 
Equity,   Section  40;   McMichael  134  Goodyear  v.  Railroad  Co.,  1 

&  Wildman  Mfg.  Co.  v.  Ruth,  128  Fisher,  627,  1853;  Suydam  v.  Day, 

F.  R.  706,  1904.  2  Blatch.  21,  1846;  Washing  Ma- 

131  Abbett  v.  Zusi,  5  Bann.  &  chine  Co.  v.  Earle,  3  Wallace,  Jr., 
Ard.  38,  1879.  320,  1861. 

132  Harrison  v.  Morton,  83  Md.  135  Pope  Mfg.  Co.  v.  Gormully 
747,  1896.  Mfg.  Co.,  144  U.  S.  250,  1892. 


CHAP.    XI.]  TITLE  347 

invention  for  one  of  several  purposes  to  which  it  is  appli- 
cable. The  rules  which  relate  to  the  form,  authentication, 
construction,  revocation,  reformation  and  effect  of  assign- 
ments, refer  with  equal  force  to  grants;  except  as  other- 
wise stated  or  implied  in  this  section,  and  except  as  the 
explained  nature  of  a  grant  clearly  indicates  otherwise. 
In  addition  to  those  rules,  there  are  several  which  refer 
to  grants  and  not  to  assignments;  and  to  the  latter  it  is 
now  in  order  to  attend. 

A  grant  is  not  void  for  ambiguity  where  it  purports  to 
convey  all  of  the  territory  of  the  United  States  except  a 
number  of  counties  theretofore  conveyed  to  others,  but 
not  specified  in  the  grant;  because  the  reservation  is  such 
an  one  as  is  capable  of  being  made  certain  by  competent 
evidence.136  It  is  not  inconsistent  with  the  character  of 
a  document  as  a  grant,  that  it  contains  a  clause  of  forfeit- 
ure in  case  of  non-payment  of  royalties,  or  a  clause  pro- 
viding that  the  grantor  shall  prosecute  and  defend  suits 
relating  to  the  exclusive  right  granted.137  And  a  grant 
is  not  forfeited  by  failure  to  pay  a  royalty;  or  to  keep 
some  other  promise  made  by  the  grantee  therein,  unless 
the  grant  provides  that  such  a  failure  shall  work  such  a 
forfeiture.138  Nor  is  it  inconsistent  with  a  grant  that  it 
is  subject  to  an  outstanding  license;139  or  that  the  docu- 
ment limits  the  exercise  of  the  exclusive  right  to  the  mak- 
ing, using  and  selling  of  a  particular  number  of  specimens 
of  the  patented  invention  involved.140    But  no  instrument 

136  Washburn  [&  Moen  Mfg.  139  Russell  v.  Kern,  58  F.  R.  384, 
Co.    v.    Haish,  \    F.    R.    908,      1893. 

1880.  uo  Wilson  v.  Rousseau,  4  How- 

137  Littlefield  v.  Perry,  21  Wal-  ard,  646,  1846;  Waterman  v. 
lace,  220,  1874.  Mackenzie,  138  U.  S.  256,  1891; 

138  Atkins  v.  Park,  61  F.  R.  957,  Washburn  v.  Gould,  3  Story,  122, 
1894.  1844;  Ritter  v.  Serrell,  2  Blatch. 

379,  1852. 


348  TITLE  [chap.   XI. 

can  be  a  grant,  which  reserves  a  right  to  the  grantor  to 
make,  but  not  to  sell  or  use,141  or  to  sell,  but  not  to  make 
or  use,142  specimens  of  the  patented  thing,  within  the  ter- 
ritory covered  by  the  instrument. 

§  288.  A  grant  of  an  exclusive  right  to  make,  use,  and 
sell  a  particular  patented  invention,  within  a  particular 
part  of  the  United  States,  confers  the  right  to  use  and  sell, 
anywhere  within  the  United  States,  those  specimens  of 
that  invention  which  are  made  and  sold  under  the  grant, 
and  within  the  territory  covered  thereby.143  And  an 
agreement  between  owners,  not  to  permit  any  sale  or  use 
of  the  subject  of  their  patent,  in  the  territory  of  each 
other,  is  not  binding  upon  purchasers  of  the  patented  ar- 
ticles, from  either  of  those  owners,  even  where  the  pur- 
chasers knew  of  the  agreement.144 

A  lawful  sale  in  a  foreign  country,  of  an  article  patented 
in  that  country,  and  also  in  the  United  States,  does  not 
authorize  the  use  or  sale  in  the  United  States  of  the  article 
thus  sold  in  the  foreign  country,145  even  though  the  maker 
and  seller  in  the  foreign  country  had  the  right  from  the 
United  States  patentee  to  there  make  and  sell,  and  the 
article  is  used  only  for  personal  use  and  not  for  profit.146 
And  a  patentee  owning  a  United  States  patent,  and  also 
a  patent  of  some  foreign  country,  on  the  same  article,  may 
couple  his  sales  of  that  article  in  any  foreign  country, 
with  a  restriction  prohibiting  its  importation  into  the 
United  States;  and  that  restriction  will  be  binding  upon 

141  Waterman  v.  Mackenzie,  138  U.  S.  355,  1893;  Keeler  v.  Folding 
U.  S.  256,  1891.  Bed  Co.,  157  U.  S.  659,  1895. 

142  Pitts  v.  Jameson,  15  Bar-  144  Jackson  v.  Vaughan,  73  F.  R. 
bour  (N.  Y.  Supreme  Court),  315,  837,  1896. 

1853.  14*Boesch  v.  Graff,  133  U.  S. 

143  Adams  v.  Burke;  17  Wallace,      703,  1890. 

453, 1873;  Hobbie  v.  Jennison,  149          14«  Daimler  Mfg.  Co.  v.  Conklin, 

170  F.  R.  70,  1909. 


CHAP.    XI. J  TITLE  34!) 

all  persons  in  the  United  States  who  have  knowledge  or 
other  notice  thereof.117 

§  288a.  A  mortgage  may  be  executed  to  cover  an  entire 
patent,  or  an  undivided  part  thereof;  or  the  entire  right, 
or  an  undivided  interest  therein,  within  a  certain  specified 
part  of  the  United  States.  And  the  due  recording  of  such  a 
mortgage  in  the  Patent  Office  makes  the  title  of  the  mort- 
gagee complete;  so  that  he  is  entitled  to  grant  licenses, 
receive  royalties,  bring  suits  against  infringers,  and  re- 
cover profits  or  damages  from  them,  as  long  as  his  mort- 
gage continues  in  force;  and  it  will  continue  in  force  until 
it  is  ended  by  a  payment  of  the  debt  secured  thereby, 
at  the  time  provided  for  therein,  or  by  redemption,  on 
a  bill  in  equity,  within  a  reasonable  time  thereafter.148 
But  such  a  mortgage  will  not  affect  an  outstanding  li- 
cense, particularly  where  the  mortgagee  is  chargeable 
with  notice  thereof.149 

§  289.  A  creditor's  bill  may  operate  to  transfer  a  com- 
plete title,  or  an  equitable  title,  to  a  patent  right,  whenever 
a  judgment  is  obtained  against  its  owner,  and  an  execu- 
tion issued  on  that  judgment  is  returned  nulla  bona;  and 
the  court  in  which  the  creditor's  bill  is  filed  may  appoint 
a  trustee  or  master  to  execute  a  proper  assignment.150 
But  a  suit,  instituted  by  the  filing  of  such  a  bill,  is  not  a 
patent  suit  in  such  a  sense  as  to  confer  jurisdiction  on  a 
Federal  court.151  Where  jurisdiction  is  not  conferred  upon 
such  a  court  by  variant  citizenship,  or  other  cause  known 
to  the  law,  it  will  be  necessary  to  proceed  in  some  court  of 

147  Dickerson  v.  Matheson,  57  15°  Ager  v.  Murray,  105  U. 
F.  R.  524,  1893;  Dickerson  v.  S.  126,  1881;  Wilson  v.  Fire 
Tinling,  84  F.  R.  192,  1897.  Alarm     Co.,     151     Mass.     515, 

148  Waterman  v.  Mackenzie,  138  1890. 

U.  S.  256,  1891.  151Ryan  v.  Lee,  10  F.  R.  917, 

149  Waterman   v.    Shipman,   55      1882. 
F.  R.  984,  1893. 


350  TITLE  [CHAP.    XT. 

a  State.  In  such  of  the  States  as  have  preserved  equity 
pleadings  and  proceedings,  a  creditor's  bill  is  the  proper 
document  to  file  in  such  a  court,  when  pursuing  such 
relief;  but  in  the  States  which  have  adopted  codes  of  civil 
procedure,  in  place  of  the  common  law  and  equity  plans 
of  judicature,  the  end  in  view  may  be  reached  by  pro- 
ceedings supplementary  to  executions.152  Or  where  the 
unsatisfied  judgment  was  entered  for  costs  against  an 
unsuccessful  patentee,  his  patents  may  be  reached  and 
sold  to  raise  money  to  pay  that  judgment,  by  means  of  a 
petition  in  the  same  suit  in  which  it  was  entered.153 

§  290.  Adjudication  of  bankruptcy  and  appointment 
and  qualification  of  the  trustee  of  the  estate  of  a  bank- 
rupt, operates,  under  the  bankrupt  law  of  1898,  to  vest 
in  such  trustee,  and  his  successor  and  successors  if  he  shall 
have  any,  whatever  title  the  bankrupt  had,  in  any  patent 
or  patent  right  or  right  of  action  thereunder,  at  the  date 
on  which  he  was  adjudged  a  bankrupt.154  The  rights  so 
acquired  include  any  estoppel  which  may  have  existed 
in  the  bankrupt's  favor  against  his  assignor,155  as  is  like- 
wise true  in  the  case  of  a  purchase  from  a  receiver,  at 
least  when  the  suit  in  which  the  receiver  was  appointed 
was  instigated  by  the  person  against  whom  the  estoppel 
is  invoked.156  The  bankrupt  law  of  1867,  excepted  from 
the  corresponding  transfer  of  property,  which  was  pro- 
vided for  by  that  law,  all  patents  and  other  property 
held  in  trust  by  the  bankrupt;  157  but  the  bankrupt  law 

152  Pacific  Bank  v.  Robinson,  57  Waterman  Co.  v.  Kline,  234  F.  R. 

California,  522,  1881;  Newton  v.  891,  1916. 

Buck,  77  F.  R.  615,  1896.  155  Fishel  Nessler  Co.  v.  Fishel  & 

J"  Maitland  v.  Gibson,  79  F.  R.  Go.,  201  F.  R.  790,  1913. 

136,  1897.  16fl  Schiebel  Toy  &  Novelty  Co. 

164  30  Statutes  at  Large,  p.  565,  v.  Clark,  217  F.  R.  760,  1914. 

Ch.  541,  Section  70.    But  see  the  157  Revised    Statutes,     Section 

Bankruptcy  Act  of  1 910  and  L.  E.  5053. 


CHAP.    XI.]  TITLE  351 

of  1898  contains  no  such  exception.  A  title  to  a  patent 
passed  to  an  assignee  in  bankruptcy,  under  the  law  of 
1867,  subject  to  his  election  not  to  accept  it,  if  in  his 
opinion  it  was  worthless,  or  would  be  burdensome  and 
unprofitable.158  And  it  is  probable  that  the  same  rule 
will  be  adjudged  to  be  applicable  to  the  bankrupt  law  of 
1898.  Under  the  latter  statute  a  pending  application  is 
neither  a  " patent  right"  within  the  meaning  of  clause  2 
of  the  statute,  nor  " property"  within  the  meaning  of 
clause  5  thereof  and  so  does  not  pass  to  the  trustee.159 

Corresponding  proceedings  in  insolvency  under  State 
laws,  do  not  have  the  operation  of  bankruptcy  proceed- 
ings in  this  particular.  They  do  not  confer  upon  the  as- 
signee in  insolvency  any  legal  title  to  the  patent  rights  of 
the  insolvent.160  But  a  State  court  which  has  jurisdiction 
of  such  proceedings  may  compel  the  insolvent  to  execute 
such  an  assignment  to  the  assignee  in  insolvency,  as  will 
convey  the  same  rights  to  the  latter,  as  those  which,  with- 
out such  a  document,  are  conveyed  to  a  trustee  in  bank- 
ruptcy under  the  bankrupt  law  of  1898; 161  for  a  State 
may  subject  the  patent  rights  of  an  insolvent  citizen,  to 
the  payment  of  his  debts.162 

And  the  title  to  the  patents  of  dissolved  corporations 
will  generally  pass,  under  the  operation  of  State  laws,  to 
the  receivers,  or  other  officials  who  are  appointed  to  wind 
up  their  affairs.163 

158  Sessions  v.  Romadka,  145  Newton  v.  Buck,  72  F.  R.  780, 
U.  S.  37,  1892.  1896. 

»»  In  re  Dann,  129  F.  R.  495,  lfll  Ager  v.  Murray,   105  U.  S. 

1904.     But  see  In  re  Myers  v.       131,  1881;  Jewett  v.  Atwood  Sus- 
Wolf  Mfg.  Co.,  205  F.  R.  289,      pender  Co.,  100  F.  R.  647,  1900. 
1913.  182  Barton  v.  White,  144  Mass. 

m  Ashcroft     v.     Walworth,     1       283,  1887. 
Holmes,  154,  1872;  McCulloh  v.  Ui  McCulloh  v.  Association,  45 

Association,  45  F.  R.  479,  1891;      F.  R.  479,  1891. 


352  TITLE  [chap.  XI. 

§  291.  Death  of  an  inventor,  before  the  grant  of  a 
patent  for  his  invention,  causes  a  transfer  of  his  inchoate 
title  to  his  executor  or  administrator,  in  trust  for  the  heirs 
at  law  of  the  deceased  in  case  he  dies  intestate,  or  in  trust 
for  his  devisees  in  case  he  leaves  a  will  disposing  of  the 
invention.164  Such  an  inchoate  title  has  several  of  the 
same  qualities,  in  the  hands  of  the  executor  or  adminis- 
trator, that  it  had  in  the  hands  of  the  deceased.  If  it 
was  an  unassigned  inchoate  title  in  the  hands  of  the  in- 
ventor, it  is  likewise  so  in  the  hands  of  his  legal  represent- 
ative. If  the  deceased  had  parted  with  the  equitable 
title,  and  had,  at  his  death,  only  the  inchoate  legal  title, 
the  equitable  title  will  be  unaffected  by  the  death  of  the 
inventor,  and  will  remain  the  property  of  its  purchaser.165 
So  also,  if  the  inventor  had  parted,  prior  to  his  death, 
with  the  inchoate  legal  title,  and  retained  the  equitable 
title,  then  the  latter,  and  not  the  former,  will  devolve  upon 
his  executor  or  administrator. 

Death  of  the  owner  of  any  legal  or  equitable  title  to  a 
patent  right  already  in  existence,  causes  a  transfer  of  that 
title  to  his  executor  or  administrator,  in  like  manner  as  it 
causes  the  transfer  of  any  other  intangible  personal  prop- 
erty of  the  deceased.166  Such  a  legal  representative  may 
convey  the  title  by  assignment  or  by  grant,  by  means  of 
any  suitable  instrument  in  writing,  and  in  pursuance  of 
such  general  or  special  authority  from  the  probate  court 
as  is  prescribed,  in  that  behalf,  by  the  laws  of  the  particular 

194  Revised     Statutes,     Section  Co.  v.  Philadelphia  Extinguisher 

4896,    as    amended    by    Act    of  Co.,  1  Bann.  &  Ard.  177,  1874. 
May  23,  1908,  Chap.  188,  Section          m  Brooks  v.  Jenkins,  3  McLean, 

4896,  35  Stat.  245;  De  La  Vergne  441,  1844;  Hodge  v.  North  Mis- 

Mach.  Co.  v.  Featherstone,   147  souri  Railroad  Co.,  1  Dillon,  104, 

U.  S.  209,  1893.  1870;  Shaw  Valve  Co.  v.  New  Bed- 

166  Northwestern    Extinguisher  ford,  19  F.  R.  753,  1884;  Bradley 

v.  Dull,  19  F.  R.  913,  1884. 


CHAP.    XI.]  TITLE  353 

State  whose  court  that  tribunal  is.167  Where  there  are 
several  joint  executors  or  administrators,  the  assignment 
or  grant  of  one  of  them  is  legally  the  assignment  or  grant 
of  them  all;  18s  and  if  an  administrator  denominates  him- 
self an  executor,  or  if  an  executor  calls  himself  an  adminis- 
trator, in  such  a  document,  that  document  will  be  none 
the  less  efficacious  to  convey  the  title  which  he  holds  in 
his  true  capacity.169  Where  the  executor  or  adminis- 
trator takes  no  action  relevant  to  a  patent  which  belonged 
to  him  whose  estate  is  being  administered,  and  is  dis- 
charged after  settling  the  estate;  the  ownership  of  the 
patent  devolves  on  those  who  are  the  heirs  at  law  of  the 
deceased.170 

§  292.  Tenancy  in  common,  in  a  patent  right,  will 
arise  whenever  the  sole  owner  of  such  a  right,  in  all  or  in 
part  of  the  territory  of  the  United  States,  conveys  to  an- 
other an  undivided  interest  in  the  whole  or  in  part  of  the 
right  which  he  owns.  Mutual  ownership  of  the  same  sort 
arises  when  a  plurality  of  persons  are  joint  inventors •  of  a 
process  or  thing,  for  which  they  obtain  a  joint  patent;  171 
and  also  when  a  plurality  of  persons  obtain,  by  one  assign- 
ment or  grant,  the  undivided  ownership  of  a  patent,  or 
the  undivided  ownership  of  a  patent  right  in  a  part  of  the 
territory  of  the  United  States.  The  ordinary  incidents  of 
tenancy  in  common  therefor  appertain  to  such  ownership 
and  each  owner  becomes  entitled  to  use  the  invention 
without  accounting  to  the  other.17'2 

167  Brooks  v.  Jenkins,  3  McLean,  17°  Winkler  v.  Studebaker  Mfg. 

441,  1844.  Co.,  105  F.  R.  190,  1900. 

188  Wintermute  v.  Redington,  1  171  Drake  v.  Hall,  220  F.  R. 
Fisher,  239,  1856.  905,  1914. 

189  Newell  v.  West,  13  Blatch.  172  Drake  v.  Hall,  220  F.  R.  905, 
114,  1875.  1914;  Central  Brass  &  Stamping 

Co.  v.  Stuber,  220  F.  R.  909,  1915. 


354  TITLE  [('HAP.    XI. 

§  294.  One  tenant  in  common  of  a  patent  right  may  exer- 
cise that  right  to  any  extent  he  pleases,  without  the  con- 
sent of  any  co-tenant.  He  may  make,  use  and  sell  speci- 
mens of  the  patented  invention  to  any  extent,  and  may 
license  others  to  do  so;  and  neither  he  nor  his  licensees 
can  be  enjoined  from  a  continuance  in  so  doing.173  Nor 
can  any  recovery  of  profits  or  damages  be  had  against  any 
such  licensee  at  the  suit  of  any  co-tenant  of  any  such 
licensor.174  And  no  recovery  of  profits  or  damages  can 
be  had  against  one  co-tenant  who,  without  the  consent 
of  the  others,  has  made,  used  or  sold  specimens  of  the 
patented  thing.175  It  is  said  that  the  same  rules  apply 
as  between  two  or  more  joint  licensees.176 

But  where  a  patent  belonging  to  tenants  in  common, 
has  been  infringed  by  a  third  party,  the  right  of  action 
for  that  infringement  belongs  in  common  to  all  the  owners, 
and  cannot  be  fully  released  by  either  of  them  alone.177 

Either  one  of  several  co-tenants  in  a  patent  right  may  of 
course  sell  his  right  independently  of  any  other;  m  but 
where  joint  trustees  are  appointed  to  hold  the  legal  title 
to  a  patent,  and  to  manage  it  according  to  their  mutual 
judgment  and  discretion,  a  joint  deed  of  all  those  trustees 
is  necessary  to  convey  that  right  to  another.179 

173  Clum  v.  Brewer,   2  Curtis,  &  Ard.  225,  1878;  Blackledge  v. 

523,  1855;  AspinwaU  Mfg.  Co.  v.  Weir  &  Craig  Mfg.  Co.,  108  F.  R. 

Gill,  32  F.  R.  697,  1887;  Grier  v.  71,  1901. 

Baynes,  49  F.  R.  367,  1893;  La-  176  Rudge-Whitworth   v.    Houk 

lance   &   Grosjean   Mfg.  Co.  v.  Mfg.  Co.,  221  F.  R.  678,  1914. 

National    Enameling    Co.,     108  m  Lalance    &    Grosjean    Mfg. 

F.  R.  78,  1901.  Co.  v.  Haberman  Mfg.  Co.,  93 

"*  Dunham  v.  Railroad  Co.,  7  F.  R.  197,  1899;  and  107  F.  R. 

Bissell,  223,  1876.  487,  1901. 

175Vose    v.     Singer,    4    Allen  178May   v.   Chaffee,   2   Dillon, 

(Mass.),  232,   1862;  De  Witt  v.  388,  1871. 

Mfg.  Co.,  5  Hun  (N.  Y.),  301,  179Wiscott       v.       Agricultural 

1875;  Whiting  v.  Graves,  3  Bann.  Works,  11  F.  R.  302,  1882. 


CHAP.    XI.]  TITLE  355 

An  agreement  by  a  trustee  of  a  patent  for  the  benefit 
of  several  beneficiaries  of  whom  the  trustee  himself  is  one, 
to  sell  the  patent  cannot  be  specifically  enforced  even 
as  to  the  trustee's  own  interest,  where  the  object  of  the 
creation  of  the  trust  was  to  prevent  less  than  all  of  the 
joint  owners  from  conveying  the  same  or  granting  license.-, 
without  the  consent  of  all,  and  where  the  vendee  had 
notice  of  the  trust.180 

§  295.  Partition  of  a  patent  right,  held  by  tenancy  in 
common,  may  of  course  be  made  by  the  common  consent 
and  mutual  action  of  all  the  owners  of  that  right;  but  no 
such  partition  can  be  made  against  the  will  of  either 
owner.  But  equity  has  jurisdiction  to  remove  a  cloud 
from  a  title  to  a  patent,  where  that  cloud  consists  in  an 
express  or  an  implied  assertion  of  adverse  ownership  or 
encumbrance.181 

180  M'Duffee  v.  Hestonville,  M.  181  Dredging  Co.  v.  Miller,  20 

&  F.  Pass.  Ry  Co.,  162  F.  R.  36,      App.  D.  C.  253,  1902;  Burpee  v. 
1908.  Guggenheim,  226  F.  R.  214,  1915. 


CHAPTER  XII 


LICENSES 

296.  Licenses    defined    and    de-  :J()(i. 

scribed.  307. 

i".)?.  Express    licenses    to    make, 

with  implied  leave  to  use,  307a 
or  implied  leave  to  sell  the 

things  made.  308. 

298.  Express  licenses  to  use,  with  309. 

implied  leave  to  make  for  310. 

use.  311. 

299.  Express  licenses  to  sell,  with  312. 

implied  leave  to  the  ven- 
dees to  use  and  to  sell  the 

things  they  purchase.  313. 

300.  Licenses  to  make  and  use, 

without  implied  leave  to  313a 
sell. 

301.  Licenses  to  make  and  sell,  or  314. 

to  use  and  sell,  with  im- 
plied leave  to  the  vendees 

to  use  and  to  sell  the  ar-  314a 
tides  they  buy. 

302.  Express  licenses  so  restricted 

as  not  to  convey  implied  3146. 
rights. 

302a.  Implied  licenses  to  repair  or  314c. 

improve.  3  Lid, 

303.  Written  and  oral  licenses.  314e. 

304.  Recording  and  notice.  314/. 

305.  Licenses  given  by  one  of  sev-  314a. 

eral   owners   in   common,  314/?,. 

and  licenses  given  to  one  314i. 

of  several  joint  users.  314j. 


Construction  of  licenses. 

Warranty  of  validity  of  pat- 
ent, and  eviction. 
Warranty  of  validity  of  li- 
cense. 

Clauses  of  forfeiture. 

Effects  of  forfeiture. 

Assignability  of  licenses. 

Purely  implied  licenses. 

Implied  licenses  from  con- 
duct, and  first  by  acquies- 
cence. 

Implied  license  from  conduct 
by  estoppel. 

Implied  license  from  em- 
ployment of  inventor. 

Implied  license  from  actual 
recovery  of  a  full  license 
fee. 
License  restrictions  on  the 
use  and  resale  of  patented 
articles. 

The  patent  monopoly   an 
aggregation  of  rights. 

Specific  decisions  considered. 

The  same  subject  continued. 

The  same  subject  continued. 

The  same  subject  continued. 

The  same  subject  continued. 

The  same  subject  continued. 

The  Clayton  Act. 

The  Clayton  Act  construed. 


§  296.  Any  conveyance  of  a  right  under  a  patent,  which 
does  not  amount  to  an  assignment  or  to  a  grant,  is  a 
356 


CHAP.    XII.] 


LICENSES 


:;:>? 


license,1  and  may  be  granted  at  any  time  after  the  appli- 
cation for  patent  is  filed.*-  It  is  a  license,  if  it  does  not 
convey  the  entire  and  unqualified  monopoly,  or  an  un- 
divided interest  therein,  throughout  the  particular  ter- 
ritory to  which  it  refers.*3  Consistently  with  this  defini- 
tion, the  following  have  been  held  to  constitute  licenses 
only:  an  exclusive  right  to  make  and  sell,  but  not  to  use: 4 
an  exclusive  right  to  make  and  use,  but  not  to  sell:5 
an  exclusive  right  to  use  and  sell,  but  not  to  make : 6  an 
exclusive  right  to  make,  to  use,  and  to  sell  to  be  used,  for 
certain  purposes,  but  for  no  other: 7  and  the  exclusive  con- 
veyance of  some,  but  not  all,  of  the  claims  of  a  patent.8 
"The  right  to  manufacture,  the  right  to  sell,  and  the  right 
to  use,  are  each  substantive  rights,  and  may  be  granted  or 
conferred  separately  by  the  patentee."  9  Any  one  or  two 
of  these  rights  may  be  expressly  conveyed  by  a  patentee, 

1  See  Section  274;  Waterman  v.  4  Hayward    v.    Andrews,     10G 

Mackenzie,  138  U.  S.  255,  1891;      U.  S.  673,  1882;  Dorsey  Rake  Co. 


Seibert  Oil  Cup  Co.  v.  Lubricator 
Co.,  34  F.  R.  221,  1888;  Hatfield 
v.  Smith,  44  F.  R.  355,  1890;  Rice 
v.  Boss,  46  F.  R.  195,  1891 ;  Stand- 
ard Button-Fastener  Co.  v.  Ellis, 
159  Mass.  449,  1893;  Ft.  Wayne, 
Cincinnati  &  Louisville  R.  R.  Co. 
v.  Haberkorn,  1  Ind.  App.  481, 
1896;  Kilburn  v.  Holmes,  121  F.  R. 
750,  1903;  Paulus  v.  M.  M'Buck 
Mfg.  Co.,  129  F.  R.  594,  1904. 

2  St.  Louis  Street  Flushing 
Mach.  Co.  v.  Sanitary  Street 
Flushing  Mach.  Co.,  178  F.  R. 
923,  1910. 

3  Gayler  v.  Wilder,  10  Howard, 
494,  1850;  Sanford  v.  Messer,  1 
Holmes,  149,  1872;  Hill  v.  Whit- 
comb,  1  Holmes,  321,  1874. 


v.  Mfg.  Co.,  12  Blatch.  203,  1874. 

5  Mitchell  v.  Hawley,  16  Wal- 
lace, 544,  1872;  Rice  v.  Boss,  46 
F.  R.  195,  1891. 

8  Hamilton  v.  Kingsbury,  17 
Blatch.  265,  1879;  Brush  Electric 
Co.  v.  California  Electric  Light 
Co.,  52  F.  R.  959,  1892. 

7  Gamewell  Telegraph  Co.  v. 
Brooklyn,  14  F.  R.  255,  1882;  Ja- 
ros  Underwear  Co.  v.  Fleece  Un- 
derwear Co.,  60  F.  R.  623,  1894; 
De  Forest  v.  Collins  Wireless 
Telephone  Co.,  174  F.  R.  821, 
1909. 

8  Pope  Mfg.  Co.  v.  Gormully 
Mfg.  Co.,  144  U.  S.  249,  1892. 

9  Adams  v.  Burke,  17  Wallace, 
456,  1873. 


358  LICENSES  [chap.    XII. 

while  the  other  is  expressly  retained  by  him.  In  the  ab- 
sence of  express  reservation,  however,  some  licenses  are 
extended  by  implication,  so  as  to  convey,  not  only  whal 
they  expressly  cover,  but  also  some  right  which  is  neces- 
sary to  the  full  enjoyment  of  the  right  expressly  conveyed. 
This  practice  is  not  in  conflict  with  the  rule  which  pro- 
hibits the  enlargement  of  an  instrument  in  writing  by 
parol  evidence;  because  that  rule  is  directed  only  against 
the  admission  of  oral  evidence  of  the  language,  used  by 
the  parties  in  a  contract  which  was  reduced  to  writing.10 
This  practice  relates  to  the  legal  effect  of  the  language 
actually  written,  and  is  based  on  that  maxim  of  the  com- 
mon law  which  prescribes,  that  any  one  granting  a  thing, 
impliedly  grants  that,  without  which,  the  thing  expressly 
granted  would  be  useless  to  the  grantee.11 

§  297.  An  express  license  to  make  specimens  of  a  pat- 
ented thing,  is  without  value,  unless  it  implies  a  right  to 
use,  or  a  right  to  sell,  the  specimens  made  thereunder. 
It  is  not  to  be  presumed  that  a  right  so  nugatory  as  a 
bare  right  to  make,  was  the  only  subject  of  a  license  for 
which  a  valuable  consideration  was  paid.  Whether  the 
implied  right,  which  accompanies  such  a  license,  is  a  right 
to  use  or  a  right  to  sell,  can  best  be  determined  by  ascer- 
taining the  circumstances  which  surrounded  the  giving 
of  the  particular  license  in  question.  If  the  licensee  was 
engaged  in  a  business  which  made  it  convenient  for  him 
to  use  the  thing  involved;  then  the  right  to  use  will  be 
implied  in  preference  to  the  right  to  sell,  because  it  is  the 
more  natural  implication  in  such  a  case.  On  the  other 
hand,  if  the  licensee  had  no  occasion  to  use  the  thing  in 

10  Greenleaf  on  Evidence,  Sec-  Brush  Electric  Co.  v.  California 

tion  277.  Electric  Light  Co.,  52  F.  R.  960, 

"Steam  Stone  Cutter  Co.   v.  1892. 
Shortsleeves,  16  Blatch.  382, 1879; 


CHAP.    XII.]  LICENSES  359 

view,  but  was  engaged  in  making  and  selling  similar 
things,  for  the  use  of  others,  then  a  right  to  sell  will  be 
implied  from  a  right  to  make.12  Rights  to  both  use  and 
sell  will  not  be  implied  from  an  express  license  to  make, 
because  only  one  of  those  rights  is  necessary  to  the  bene- 
ficial enjoyment  of  such  a  license.  An  express  license  to 
make  specimens  of  a  particular  thing,  does  not  imply  a 
license  to  use  a  particular  patented  machine  for  that  pur- 
pose, even  where  the  patent  on  that  machine  was  owned 
by  the  licensor,  at  the  time  of  the  license,  and  even  where 
that  machine  was  then  the  best  known  means  of  making 
the  thing  licensed.13 

§  298.  An  express  license  to  use  a  limited  or  unlimited 
number  of  specimens  of  a  patented  article,  implies  a  right 
to  make  those  specimens,  and  to  employ  others  to  make 
them,  and  will  protect  those  others  in  making  them  for  the 
use  of  the  licensee. 14  If  the  license  to  use,  covers  a  greater 
length  of  time  than  one  specimen  of  the  thing  to  be  used 
will  last;  then  there  is  an  implied  right  in  the  licensee  to  re- 
pah*  or  to  rebuild  that  specimen,  or  to  replace  it  by  an- 
other specimen  made  or  purchased  for  that  purpose. lr> 

§  299.  An  express  license  to  sell  specimens  of  a  patented 
thing,  does  not  imply  any  right  to  make  those  specimens, 
if  it  can  be  presumed  that  they  may  be  obtained  by  pur- 
chase; because  no  person  requires  any  license  to  enable 
him  to  lawfully  buy  an  article  covered  by  any  patent. 

12  Steam  Cutter  Co.  v.  Sheldon,  Peninsular  L.  P.  &  H.  Co.,  95 
10  Blatch.  8,  1872.  F.  R.  676,  1899. 

13  Troy  Nail  Factory  v.  Corning,  15  Wilson  v.  Stolley,  4  McLean, 
14  Howard,  193,  1852.  275, 1847;  Bicknell  v.  Todd,  5  Mc- 

14  Steam  Stone  Cutter  Co.  v.  Lean,  236,  1851;  Woodworth  v. 
Shortsleeves,  16  Blatch.  381, 1879;  Curtis,  2  Woodbury  &  Minot,  524, 
Johnson  Signal  Co.  v.  Union  1847;  Steam  Cutter  Co.  v.  Shel- 
Switch  &  Signal  Co.,  55  F.  R.  487,  don,  10  Blatch.  8,  1872. 

1893;  Edison  Electric  Light  Co.  v. 


360  LICENSES  [CHAP.    XII. 

But  u  license  to  sell  does  imply  that  a  right  to  use  and  to 
sell  again  shall  be  conferred  on  the  vendees  of  the  licensee, 
for  otherwise  no  person  would  buy  except  for  exportation, 
and  sales  for  exportation  are  seldom  sufficiently  practic- 
able to  raise  a  presumption  that  they  alone  were  contem- 
plated by  the  parties  to  a  license  to  sell. 

§  300.  A  license  to  make  and  use  does  not  authorize 
any  sale  of  the  thing  so  made,  nor  authorize  any  purchaser 
of  that  thing  to  use  the  same.16  Nor  does  a  sale,  coupled 
with  an  express  license  to  use,  give  any  right  to  use  after 
the  license  has  been  forfeited  or  has  expired.17  The  pur- 
chaser of  a  patented  thing  gets  no  other  right  to  use  it 
than  such  right  as  the  seller  had  an  express  or  an  implied 
right  to  convey.18  And  the  purchaser  of  a  thing  which  is 
useful  only  in  producing  a  patented  article,19  or  in  being 
combined  with  other  things  to  constitute  a  patented  ar- 
ticle,20 or  when  used  to  perform  a  patented  process,21 
gets  thereby  no  right  to  use  his  purchased  thing  for  such 
a  purpose;  for  such  a  right  would  derogate  from  the  ex- 
clusive rights  of  the  owner  of  the  patent  on  that  article, 
combination,  or  process.  But  the  purchaser  of  a  patented 
apparatus,  from  the  owner  of  the  patent  thereon,  acquires 
whatever  right  that  patent  covers,  to  use  that  apparatus 
in  accordance  therewith,  even  where  it  is  capable  of  a 
different  use.22    And  a  purchaser  of  an  apparatus  which 

16  Wilson  v.  Stolley,  3  McLean,  19  Stevens  v.  Cady,  14  Howard, 
277,  1847.  528,  1852;  Stevens  v.  Gladding,  17 

17  Wortendyke  v.  White,  2  Howard,  447,  1854;  Elgin  Wind 
Bann.  &  Ard.  25,  1875;  Porter  Power  Co.  v.  Nichols,  65  F.  R. 
Needle  Co.   v.   National  Needle  220,  1894. 

Co.,  17  F.  R.  536,  1883.  20  Roosevelt  v.  Electric  Co.,  20 

18  Chambers  v.  Smith,  5  Fisher,      F.  R.  724,  1884. 

14,  1870;  International  Pavement  21  United  Nickel  Co.  v.  Elec- 
Co.  v.  Richardson,  75  F.  R.  594,  trical  Works,  25  F.  R.  479,  1885. 
1896.  22  Edison  Electric  Light  Co.  v. 


CHAP.    XII.]  LICENSES  301 

can  be  used  only  in  connection  with  a  device  of  a  patent 
owned  by  the  seller  acquires  an  implied  license  to  use 
the  device  not  only  in  connection  with  the  apparatus  so 
purchased  but  also  in  connection  with  similar  apparatus 
purchased  from  other  makers.23 

§  301.  A  license  to  make  and  sell,  implies  a  right  in  the 
purchaser  to  use  and  to  sell  again,  the  thing  thus  lawfully 
sold  to  him.  When  a  specimen  of  a  patented  invention  is 
sold  with  the  authority  of  the  owner  of  the  patent  which 
covers  it,  and  without  any  restriction  on  the  ownership  or 
use  of  the  thing  conveyed;  that  specimen  passes  out  of  the 
exclusive  right  which  is  secured  by  the  patent,  and  may  be 
used  as  long,  or  sold  as  often,  as  though  it  had  never  been 
subject  to  a  patent.21  This  principle,  however,  goes  only 
to  the  extent  of  permitting  the  unrestricted  use  of  the 
patented  thing  in  the  condition  as  purchased  or  acquired 
and  does  not  permit  the  purchaser  to  use  any  of  the  parts 
in  union  with  the  parts  of  another  machine  and  thus  con- 
struct a  new  infringing  device.25  The  same  results  also 
follow  from  a  sheriff's  sale  of  a  patented  article,  where 
that  sale  was  made  in  pursuance  of  an  execution,  issued 
against  the  owner  of  the  patent  right,  and  lawfully  levied 
on  that  article,  as  the  property  of  that  owner.26  Restric- 
tions in  respect  of  methods  or  purposes  of  use,  and  pre- 

Peninsular  L.  P.  &  H.  Co.,  101  lace,  453,  1873;  Paper-Bag  Cases, 

F.  R.  831,  1900.  105  U.  S.  771,  1881;  McKay  v. 

23  Thomson-Houston      Electric  Wooster,    2   Sawyer,   373,    1873; 

Co.  ?>.  Illinois  Tel.  Const,  Co.,  152  May  v.   Chaffee,   2  Dillon,  385, 

F.  R.  631,  1907.  1871;  Detweiler  v.  Voege,  8  F.  R. 

"Morgan  Envelope  Co.  v.  Al-  600,  1881;  Holiday  v.  Mattheson, 

bany  Paper  Co.,  152  U.  S.  432,  24  F.  R.  185,  1885. 

1894;  Bloomer  v.  McQuewan,  14  25  National  Cash  Register  Co. 

Howard,    539,    1852;    Chaffee   v.  v.  Grobet,  153  F.  R.  905,  1907. 

Belting    Co.,    22    Howard,    217,  » Wilder  v.  Kent,  15  F.  R.  217, 

1859;  Adams  v.  Burke,   17  Wal-  1883. 


362  LICENSES  [chap.   XII. 

scriptions  in  respect  of  prices  and  conditions  of  leasing 
or  reselling,  may  properly  accompany  any  sale  of  a  pat- 
ented article;27  but  no  such  restriction  or  prescription  is 
operative  upon  any  subsequent  purchaser  of  that  article, 
who  had  no  notice  thereof,  at  the  time  of  his  purchase.28 

§  302.  Express  licenses  which,  if  unrestricted,  would 
convey  implied  rights,  may  be  so  restricted  that  they  will 
not  have  that  effect.29  A  license  to  make  and  sell,  may  be 
restricted  to  certain  parts  of  the  United  States,  for  the 
making,  and  to  certain  parts  for  the  selling;  and  may  be 
so  restricted  as  not  to  cover  any  making  or  selling,  for 
export  to  any  foreign  country.30  A  license  to  make  and 
use  may  likewise  be  restricted  to  limited  territory  for 
either  or  both  of  its  branches; 31  and  to  a  limited  time  as 
well  as  a  limited  territory.32  And  a  license  to  use  may  be 
restricted  in  respect  of  materials  operated  on,33  or  in  any 
other  manner. 

§  302a.  A  purchaser  may  repair  a  patented  machine 
which  he  has  purchased,  by  replacing  broken  or  worn-out 
unpatented  parts,  so  long  as  the  identity  of  the  machine 
is  not  destroyed,34  provided  the  machine  itself  is  not  an 

27  Heaton-Peninsular  Button-  Blatch.  64,  1878;  Hamilton  v. 
Fastener  Co.  v.  Eureka  Specialty  Kingsbury,  17  Blatch.  264,  1879. 
Co.,  77  F.  R.  288,  1896;  Edison  3°  Dorsey  Rake  Co.  v.  Mfg.  Co., 
Phonograph    Co.    v.    Kaufmann,  12  Blatch.  204,  1874. 

105  F.  R.  960,  1901;  Cortelyou  v.  31  Wicke     v.     Kleinknecht,     1 

Lowe,    111    F.    R.    1005,    1901;  Bann.  &  Ard.  608,  1874. 

Whitson  v.  Phonograph  Co.,   18  32  Mitchell  v.  Hawley,  16  Wal- 

App.   D.   C.   573,    1901;   Edison  lace,  544,  1872. 

Phonograph  Co.  v.  Pike,  116  F.  R.  33  Tubular  Rivet  &  Stud  Co.  v. 

863,  1902;  Victor  Talking  Mach.  O'Brien,  93  F.  R.  200,  1898. 

Co.  v.  The  Fair,  123  F.  R.  424,  3"  Young  v.  Foerster,  37  F.  R. 

1903.    See  Sections  314  et  seq.  203,    1889;   Shickle,   Harrison   & 

28  Edison  Electric  Light  Co.  v.  Howard  Iron  Co.  v.  St.  Louis  Car- 
Goelet,  65  F.  R.  614,  1894.  Coupler  Co.,  77  F.  R.  739,  1896; 

29  Hamilton   v.    Kingsbury,    15  Thomson-Houston  Electric  Co.  v. 


CHAP.    XII.]  LICENSES  363 

infringement.85  Likewise  another  who  furnishes  the  re- 
pair parts  on  the  order  of  the  purchaser  is  not  liable  for  in- 
fringement in  the  absence  of  a  license  reservation  to  the 
patentee  to  supply  such  parts.36  The  right  of  him  furnish- 
ing repair  parts  is  measured  by  the  right  of  the  user  to 
repair.36"  And  he  may  improve  such  a  machine  for  his 
own  peculiar  use,  by  substituting  for  an  unpatented  part 
thereof,  a  corresponding  part  originally  purchased,  or  not 
purchased,  from  the  patentee.37  But  no  unauthorized 
person  can  lawfully  engage  in  the  business  of  reconstruct- 
ing patented  machines  for  their  owners,  by  omissions  and 
substitutions  of  parts;  where  those  machines  do  not  re- 
quire any  repair,  but  are  thus  changed  with  a  view  to  their 
improvement.38  Nor  can  even  an  owner  of  a  patented 
machine  lawfully  replace  any  part  or  combination  thereof, 
which  is  patented  to  another  person  alone.39  And  no 
person  acquiring  the  ownership  of  mutilated  portions 
of  a  specimen  of  a  patented  thing,  can  lawfully  reconstruct 
that   specimen  by   adding  the   missing  parts;   nor   can 

H.  W.  Johns  Mfg.  Co.,  78  F.  R.  3f>  Morgan  Gardner  Electric  Co. 

364,  1896;  Alaska  Packers'  Asso-  v.  Buettner  &  Skelburne  Mach. 

ciation  v.  Pacific  Steam  Whaling  Co.,   203   F.   R.    490,    1913;    F. 

Co.,  93  F.  R.  672,  1899;  and  100  F.   Slocumb   &   Co.  v.   Layman 

F.  R.  462,  1900;  Goodyear  Shoe  Machine    Co.,    227     F.    R.    94, 

Machinery  Co.   v.   Jackson,    112  1915. 

F.  R.  149,  1901;  Morrin  v.  Robert  36°  National  Malleable  Castings 

White  Eng.  Works,  143  F.  R.  519,  Co.  v.  American  Steel  Foundries, 

1905   (see  also   opinion  of  court  182  F.  R.  626,  1910. 

below  in  138  F.  R.  68) ;  Wagner  37  Thomson-Houston      Electric 

Typewriter  Co.  v.  F.  S.  Webster  Co.  v.  Kelsey  Ry.  Specialty  Co., 

Co.,  144  F.  R.  405,  1906;  F.  F.  75  F.  R.  1010,  1896. 

Slocumb  &  Co.  v.  A.  C.  Layman  38  National  Phonograph  Co.  v. 

Machine  Co.,  227  F.  R.  94,  1915.  Fletcher,  117  F.  R.  149,  1902. 

35  Union  Special  Mach.  Co.  v.  39  Morgan  Envelope  Co.  v.  Al- 

Maimin,  161  F.  R.  748,  1908.  See  bany  Paper  Co.,  152  U.  S.  435, 

Sections  404-407.  1894. 


364  LICENSES  [chap.   XII. 

he  lawfully  use  or  soil  the  entire  articles  when  recon- 
structed.40 

§  303.  Licenses  may  be  written,  or  they  may  be  oral.41 
The  former  have  advantages  over  the  latter;  because  they 
can  be  made  exclusive,  and  can  usually  be  proved  with 
more  ease  and  more  certainty ;  and  because  the  latter  may 
sometimes  be  obnoxious  to  some  State  statute  of  frauds 
and  be  rendered  non-enforceable,  by  being  non-performa- 
ble  within  one  year  from  the  dates  of  their  origins.42  These 
points  constitute  abundant  reasons  for  embodying  all 
such  contracts  in  plain  black  and  white  documents,  rather 
than  committing  them  to  the  "slippery  memory  of  man." 
And  a  written  license,  which  purports  to  be  exclusive,  will 
operate  as  a  non-exclusive  license,  if  it  was  given  by  one 
who  had  authority  to  give  the  latter,  but  not  the  former 
kind  of  license.43  A  license  is  valid,  if  made  before  the 
patent  is  issued,  as  well  as  if  made  afterward;44  and 
a  contract  for  a  license  is  enforceable  as  a  license,  if 
no  formal  license  is  ever  given  in  pursuance  of  the 
contract.45 

§  304.  No  license  is  required  to  be  recorded,46  and  no 

40  American  Cotton  Tie  Co.  v.  42  Buhl  v.  Stephens,  84  F.  R. 
Simmons,    106   U.   S.   89,    1882;      922,  1898. 

Davis  Electrical  Works  v.  Edison  43  Union  Switch  &  Signal  Co.  v. 

Electric  Light  Co.,  60  F.  R.  276,  Johnson  Signal  Co.,  61  F.  R.  943, 

1894.  1894. 

41  Jones  v.  Berger,  58  F.  R.  1007,  44  Brush  Electric  Co.  v.  Calif or- 
1893;  Union  Switch  &  Signal  Co.  nia  Electric  Light  Co.,  52  F.  R. 
v.  Johnson  Signal  Co.,  61  F.  R.  963,  1892;  St.  Louis  Street  Flush- 
944,  1894;  Sharpless  v.  Moseley  &  ing  Machine  Co.  v.  Sanitary  Street 
Stoddard  Mfg.  Co.,  75  F.  R.  595,  Flushing  Machine  Co.,  178  F.  R. 
1896;   Cook  v.   Sterling  Electric  923,  1910. 

Co.,  150  F.  R.  766,  1907;  St.  Louis  45  American  Paper  Bag  Co.  v. 

Street    Flushing    Mach.    Co.    v.  Van  Nortwick,  52  F.  R.  752,  1892. 

Sanitary  Street  Flushing  Mach.  48  Brooks  v.  Byam,  2  Story,  525, 

Co.,  17S  F.  R.  923,  1910.  1843;  Consolidated  Fruit  Jar  Co. 


CHAP.    XII.]  LICENSES  365 

record  of  a  license  affects  the  rights  of  any  person;  for  a 
license  is  good  against  the  world,47  whether  it  is  recorded 
or  not,48  and  a  purchaser  of  a  patent  takes  it  subject  to  all 
outstanding  licenses.49  So  also,  if  a  license  is  embodied  in 
two  papers,  one  of  which  limits  the  scope  of  the  other,  an 
assignee  of  the  broader  document  will  take  subject  to  the 
limitations  of  the  narrower,  even  if  he  had  no  notice  of  its 
provisions,  nor  even  of  its  existence.  Nor  will  the  fact 
that  the  broader  document  was  recorded,  and  the  narrower 
one  unrecorded,  alter  or  affect  the  operation  of  this  rule.50 
It  follows,  that  where  two  licenses  conflict,  the  first  must 
prevail,  even  though  the  taker  of  the  second  had  no 
notice  of  the  existence  of  the  first;  and  it  also  follows 
that  any  license  will  prevail  as  against  the  claims  of  any 
subsequent  assignee  or  grantee  of  the  patent  right 
involved.51 

§  305.  A  license  from  one  of  several  owners  in  common 
of  a  patent  right,  is  as  good  as  if  given  by  all  those  owners ; 52 
and  a  license  given  to  one  of  several  joint  makers  or  users 
of  a  patented  thing  is  as  good  as  if  given  to  all,  if  the  li- 
censor gives  it  with  the  understanding  that  the  thing 
licensed  to  be  done  is  to  be  done  jointly,  or  is  to  be  done 
by  the  express  licensee  on  behalf  of  the  other  party.53 

v.  Whitney,  2  Bann.  &  Ard.  38,  50  Hamilton   v.    Kingsbury,    17 

1875;  Buss  v.  Putney,  38  N.  H.  44,  Blatch.  264  and  460,  1880. 

1859;  Jones  v.  Berger,  58  F.  R.  51  Continental  Windmill  Co.  v. 

1007, 1893;  Ft.  Wayne,  Cincinnati  Empire  Windmill  Co.,  8  Blatch. 

&  Louisville  R.  R.  Co.  v.  Haber-  295,  1871;  New  York  Phonograph 

korn,  1  Ind.  App.  481,  1896.  Co.   v.   Edison,    136   F.    R.   600, 

47  Chambers  v.  Smith,  5  Fisher,  1905. 

14,  1870.  52  Dunham  v.  Railroad  Co.,  7 

48Farrington     v.     Gregory,     4  Bissell,  224, 1876;  Paulus  v.  M.  M. 

Fisher,  221,  1870.  Beck,  129  F.  R.  594,  1904. 

49  Pratt  v.  Wilcox  Mfg.  Co.,  64  53  Bigelow      v.      Louisville,      3 

F.  R.  592,  1893.  Fisher,  603,  1869. 


!}()()  LICENSES  [CHAP.    XII. 

§  306.  The  construction  of  a  license  in  writing  depends 
upon  the  same  general  rules  us  the  construction  of  other 
written  contracts.''1  For  example,  it  is  to  be  construed  in 
the  light  of  the  circumstances  which  surrounded  its  execu- 
tion.55 Accordingly,  where  the  owner  of  several  patents 
licenses  a  person  to  make,  use  or  sell  a  particular  class  of 
things  which,  if  made,  used  or  sold  without  a  license,  would 
infringe  all  those  patents,  then  that  license  confers  a  right 
under  them  all.56  And  this  is  the  rule  even  where  the 
licensor's  title  accrued  to  him,  after  the  date  of  the  li- 
cense.57 In  the  absence  of  language  to  the  contrary  in  a 
license,  the  royalties  provided  for  therein,  are  construed 
as  being  payable  during  the  lives  of  the  patents  to  which 
they  respectively  relate,  and  not  any  longer.58  The  grant 
of  a  "license  under  said  letters"  patent  conveys  the  full 
right  to  make,  use,  and  sell  under  the  patent,  if  the  license 
contains  no  qualifying  provisions.58" 

§  307.  No  warranty  of  validity  of  the  letters  patent  is 
implied  in  any  license  given  thereunder;  and  unattended 
proof  of  invalidity  is  therefore  no  defence  to  any  suit  for 
promised  royalties.59  As  long  as  a  licensee  continues  to 
enjoy  the  benefit  of  the  exclusive  right,  he  must  pay  the 

54  Wetherill  v.  Zinc  Co.,  6  Indiana  Rubber  &  I.  Wire  Co., 
Fisher,  50,  1872.  234  F.  R.  334,  1916. 

55  Burdell  v.  Denig,  92  U.  S.  59  Birdsall  v.  Perego,  5  Blatch. 
722,  1875.  251,  1865;  Sargent  v.  Lamed,  2 

58Dey  v.   Stellman,    1   Fisher,  Curtis,  340,  1855;  Marsh  v.  Dodge 

487,  1859.  4  Hun  (N.  Y.),  278, 1875;  Bartlett 

57  Pratt  v.  Wilcox  Mfg.  Co.,  64  v.  Holbrook,  1  Gray  (Mass.),  118, 

F.  R.  591,  1893.  1854;  Marston  v.  Sweet,  66  N.  Y. 

58Sproull  v.  Pratt  &  Whitney  207,  1876;  Pope  Mfg.  Co.  v.  Ows- 

Co.,  101  F.  R.  265,  1900;  and  108  ley,  27  F.  R.  105,  1886;  Marsh  v. 

F.  R.  963,  1901.  Harris   Mfg.   Co.,   63  Wis.   283, 

58°  Buffalo     Specialty     Co.     v.  1885;  Moore  v.  National  Boiler 

Co.,  84  F.  R.  347,  1897. 


CHAP.    XII. j  LICENSES  'M)7 

royalty  which  he  promised  to  pay,  and  he  cannot  escape 
from  so  doing  by  offering  to  prove  the  patent  to  be  void.60 
It  has  been  held,  however,  that  a  licensee  may  purchase  a 
patent  which  was  pending  in  the  Patent  Office  at  the  time 
of  issuance  of  the  patent  under  which  the  license  was 
granted  and  that  he  may  assert  the  patent  so  purchased 
against  the  licensor  even  though  by  so  doing  he  proves 
the  former  invalid  by  reason  of  anticipation.61  The 
licensee  must  pay  the  promised  royalty,  not  only  on  the 
exact  invention  claimed  in  the  patent,  but  also  on  what- 
ever is  near  enough  like  that  invention  to  infringe  the 
patent.62  Nor  can  a  licensee  renounce  his  license  without 
the  consent,  acquiescence  or  fault  of  the  licensor;63  but  a 
false  representation  by  the  licensor  to  the  licensee,  of  the 
rate  of  the  royalty  paid  by  other  licensees,  is  such  a  fault 
as  will  entitle  the  licensee  to  renounce  his  license.64  A 
license  implies  that  the  licensee  shall  not  be  evicted  from 
its  enjoyment,  and  such  an  eviction  is  a  defence  to  a  suit 
for  royalties  accruing  after  it  occurred.65 

Such  an  eviction  occurs  whenever  the  patent  is  adjudged 
void  in  an  interference  suit  prosecuted  in  equity  in  pursu- 
ance of  Section  4618  of  the  Revised  Statutes,  or  whenever 
the  patent  is  repealed  by  the  decree  of  a  court  in  which  an 
action  is  brought  by  the  United  States  for  that  purpose,66 

60  Burr  v.  Duryee,  2  Fisher,  285,  63  St.  Paul  Plow  Works  v.  Star- 
1862;  Deane  v.  Hodge,  35  Minn,      ling,  140  U.  S.  195,  1891. 

153,  1886;  Godell  v.  Wells  &  84  Hat-Sweat  Mfg.  Co.  v.  War- 
French  Co.,  70  F.  R.  319,  1895;  ing,  46  F.  R.  106,  1891;  Hat- 
Holmes,  Booth  &  Haydens  v.  Mc-  Sweat  Mfg.  Co.  v.  Porter,  46  F.  R. 
Gill,  108  F.  R.  238,  1901.  757,  1891. 

61  Victor  Talking  Machine  Co.  «5  White  v.  Lee,  14  F.  R.  791, 
v.    Am.    Graphophone   Co.,    189  1882. 

F.  R.  359, 1911.   See  section  362a.         «« McKay  v.  Smith,  39  F.  R. 

62  St.  Paul  Plow  Works  v.  Star-      557,  1889. 
ling,  140  U.  S.  195,  1891. 


368  LICENSES  [chap.   mi. 

or  whenever  the  patent  is  held  to  be  void  in  a  suit  based  on 
its  infringement.87 

Such  eviction  also  occurs  whenever  the  licensee  is  en- 
joined from  acting  under  it  at  the  suit  of  the  owner  of  a 
senior  patent  ;fi8  and,  by  parity  of  reasoning,  it  occurs 
whenever  a  judgment  or  decree  is  obtained  by  the  owner 
of  a  senior  patent 3  against  the  licensee,  for  an  infringement 
which  consisted  of  acting  under  the  license,  but  not  when 
such  a  suit  is  merely  proposed  to  be  brought  by  the  owner 
of  a  senior  patent.69 

While  such  an  eviction  might  possibly  be  held  to  occur 
whenever  the  patent  is  defied  by  unlicensed  persons, 
so  extensively  and  so  successfully  as  to  deprive  the  licensee 
of  the  benefit  of  his  share  in  the  exclusive  right  which  it 
was  supposed  to  secure,  a  single  successful  defiance  is  not 
enough  to  constitute  such  an  eviction.70  Nor  does  such  an 
eviction  result  from  the  patentee  granting  later  licenses 
at  lower  rates.71 

In  the  absence  of  an  express  warranty  of  validity  of  a 
patent,  from  a  license  given  thereunder;  the  licensor,  when 
sued  by  the  licensee  for  damages  on  account  of  having  vio- 
lated the  license,  by  granting  a  competing  license  or  by  not 
suing  an  infringer,  may  prove  his  patent  to  be  void,  as 
relevant  to  the  amount  of  damages  suffered  by  the  licensee, 
by  reason  of  the  breach.72 

§  307a.  An  implied  warranty  of  validity  of  the  license 
itself,  is  appurtenant  to  every  license  given  under  a  pat- 

87  Ross  v.  Fuller  &  Warren  Co.,  70  Pope  Mfg.  Co.  v.  Owsley,  27 
105  F.  R.  510,  1900.  F.  R.  100,  1886. 

88  Pacific  Iron  Works  v.  New-  "McKay  v.  Smith,  39  F.  R. 
hall,  34  Connecticut,  67,  1867.  557,  1889;  National  Rubber  Co. 

89  American  Electric  Co.  v.  Con-  v.  Rubber  Shoe  Co.,  41  F.  R.  48, 
sumers'   Gas  Co.,  47  F.   R.  43,  1890. 

1891;    Consumers'    Gas    Co.    v.  72  Jackson  v.  Allen,  120  Mass. 

Electric  Co.,  50  F.  R.  778,  1892.       78,  1876. 


CHAP.    XII.]  LICENSES  369 

ent;  and  therefore  the  licensor  cannot  repudiate  the  li- 
cense, on  the  ground  that  he  had  no  authority  to  execute 
it,  at  the  time  he  did,  even  where  that  fact  was  known  to 
the  licensor  at  that  time.73  This  implied  warranty  of 
validity  of  a  license,  will  render  the  licensor  liable  to  an 
injunction,  if  he  presumes  to  employ  the  patented  inven- 
tion in  any  way  covered  by  the  license;  and  it  will  operate 
to  confer  upon  the  licensee,  the  benefit  of  any  estate  which 
the  licensor  may  afterward  acquire  in  the  patent,  so  far 
as  that  benefit  would  have  been  appurtenant  to  the  li- 
cense, if  that  estate  had  belonged  to  the  licensor,  at  the 
time  he  executed  the  license. 

§  308.  A  license  not  expressly  limited  in  duration,  con- 
tinues till  the  patent  expires,74  or  the  license  is  surrendered 
in  pursuance  of  its  own  provision,75  or  is  terminated  by 
a  new  agreement,76  or  is  forfeited  by  the  licensee.77 

Forfeiture  of  a  license  does  not  follow  from  the  single 
fact  that  the  licensee  has  broken  covenants  which  were 
made  by  him  when  accepting  the  license ; 78  unless  the 
parties  expressly  agreed  that  such  a  forfeiture  should 
follow  such  a  breach.79    For  example,  in  the  absence  of 

73  Seal  v.  Beach,  113  F.  R.  831,         79  White  v.  Lee,  5  Bann.  &  Ard. 

1901.  572,  1880;  Consolidated  Purifier 

74Sproull  v.  Pratt  &  Whitney  Co.  v.  Wolf,  28  F.  R.  814,  1886; 

Co.,  101  F.  R.  265,  1900;  and  108  Densmore  v.  Tanite  Co.,  32  F.  R. 

F.  R.  963,  1901.  544,  1887;  Seibert  Oil  Cup  Co.  v. 

75  Stimpson  Computing  Scale  Lubricator  Co.,  34  F.  R.  221, 
Co.  v.  W.  F.  Stimpson  Co.,  104  1888;  Hammacher  v.  Wilson,  26 
F.  R.  893,  1900.  F.   R.   241,    1886;   Washburn  & 

76  American  Street  Car  Ad-  Moen  Mfg.  Co.  v.  Wire  Fence  Co., 
vertising  Co.  v.  Jones,  122  F.  R.  42  F.  R.  675,  1890;  Brush  Elec- 
808,  1903.  trie    Co.    v.    California    Electric 

77  St.  Paul  Plow  Works  v.  Star-  Light  Co.,  52  F.  R.  964,  1892; 
ling,  140  U.  S.  195,  1891.  Piatt  v.  Fire  Extinguisher  Mfg. 

78  Chadeloid    Chemical    Co.    v.  Co.,  59  F.  R.  900,  1894. 
Johnson,  203  F.  R,  993,  1913. 


370  LICENSES  [CHAP.    XII. 

such  an  agreement,  a  mere  non-payment  of  a  license  fee 
does  not  entitle  a  party  to  a  decree  of  ;unnilment.80  And 
even  where  such  an  agreement  is  made,  it  will  not  always 
be  enforced  by  the  courts,  and  will  never  be  self-enforc- 
ing.sl  For  example,  non-payment  of  royalty  on  the  very 
day  it  becomes  due,  will  not  work  a  forfeiture,  if  that  non- 
payment arose  from  lack  of  certainty  relative  to  the  place 
of  payment,  and  from  lack  of  demand  from  the  licensor.82 
Nor  will  forfeiture  result  from  the  fact  that  in  a  suit  by 
the  owner  of  the  patent  against  a  third  person,  the  li- 
censee appeared  and  filed  briefs  in  aid  of  the  defendant.83 
Nor  will  forfeiture  of  a  license  result  from  the  fact  that  the 
licensee  has  infringed  the  patent  by  doing  acts,  with  the 
invention,  which  were  unauthorized  by  the  license.  The 
license  will  not  protect  him  in  such  doings,  but  it  will 
continue  to  protect  him  in  doing  the  acts  which  it  did 
authorize.84  Indeed,  forfeitures  are  not  favored  by  the  law ; 
and  courts  are  always  prompt  to  seize  upon  any  circum- 
stance which  indicates  an  agreement  or  an  election  to 
waive  one;85  and  an  injunction  will  issue  to  prevent  a 
threatened  wrongful  declaration  of  forfeiture.86 

80  Wagner  Typewriter  Co.  v.  82  Dare  v.  Boylston,  6  F.  R.  493, 
Watkins,  84  F.  R.  62, 1897;  Foster      1880. 

Hose  Supporter  Co.  v.  Taylor,  184         83  Comptograph   Co.    v.    Bur- 

F.    R.    71,     1911;    Rowland    v.  roughs  Adding  Machine  Co.  (con- 

Biesecker,  185  F.  R.  515,  1911.  taining  discussion  of  question  of 

81  Standard  Dental  Mfg.  Co.  v.  forfeiture  of  licenses),  175  F.  R. 
National  Tooth  Co.,  95  F.  R.  294,  792,  1909  (affirmed  with  opinion 
1899;  Hanifen  v.  Lupton,  95  F.  R.  in  183  F.  R.  321,  1910). 

470,    1899;   Chadeloid   Chemical  84  Wood  v.  Wells,  6  Fisher,  383, 

Co.  v.  Johnson,  203  F.  R.  993,  1873;  Steam  Cutter  Co.  v.  Shel- 

1913;  Foster  Hose  Supporter  Co.  don,  10  Blatch.  1,  1872. 

v.  Taylor,  180  F.  R.  994,  1910  (see  85  Insurance  Co.  v.  Eggleston, 

appeal) ;     contra,     Foster      Hose  96  U.  S.  572,  1877. 

Supporter  Co.  v.  Taylor,  184  F.  R.  86  Baker  Mfg.  Co.  v.  Washburn 

71,  1911.  &  Moen  Mfg.  Co.,  18  F.  R.  172, 


CHAP.    XII. J  LICENSES  M71 

A  surrender  of  a  license  in  pursuance  of  its  own  pro- 
vision, restores  the  parties  to  their  former  relation,  and 
enables  the  licensee  to  thereafter  act  in  respect  of  the 
patent,  with  the  rights  and  responsibilities  of  strangers  to 
the  licensor.87  And  a  termination  of  a  license  by  a  new 
agreement  will  end  or  will  modify  the  relation  of  the  par- 
ties to  the  license,  according  to  the  provisions  of  the  new 
agreement. 

At  any  rate  where  the  license  does  not  contain  a  for- 
feiture clause  the  owner  may  sue  his  licensee  for  infringe- 
ment only  on  a  showing  that  the  license  has  terminated  by 
mutual  consent  or  that  it  has  been  forfeited  by  decree 
of  a  court.  It  is  not  open  to  the  owner  of  the  patent 
to  prove  in  an  infringement  suit  in  which  such  a  license  is 
involved,  the  fact  that  the  licensee  has  committed  such  a 
breach  as  would  entitle  the  owner  to  forfeiture  if  the  ques- 
tion came  before  a  court  of  equity  in  a  direct  proceeding- 
brought  for  that  purpose.88 

§  309.  Where  a  license  is  really  forfeited,  and  the  li- 
censee continues  to  work  under  it  as  though  it  were  still 
in  force,  the  licensor  has  an  option  to  sue  him  as  an  in- 
fringer, or  to  sue  him  for  the  promised  royalties.89  If  he 
selects  the  first  of  these  remedies,  the  act  of  the  owner  of 
the  patent  is  regarded  as  a  repudiation  of  the  license,  and 
the  license  being  at  an  end  and  the  contractual  relation 
having  ceased,  the  infringer  may  interpose  any  defence 

1883.  See  Dixie  Cotton  Picker  Co.  Victor  Talking  Machine  Co.,  188 

v.  Bullock,  188  F.  R.  921,  1911,  F.  R.  431,  1911. 

wherein  the  court  discusses  va-  89  Woodworth      v.      Weed,      1 

rious  considerations  bearing  upon  Blatch.  166, 1846;  Cohnu.  Rubber 

the  question  of  right  to  forfeiture.  Co.,  3  Bann.  &  Ard.  572,  1878; 

87  Stimpson  Computing  Scale  Union  Mfg.  Co.  v.  Lounsbury,  42 
Co.  v.  W.  F.  Stimpson  Co.,  104  Barbour  (N.  Y.),  125,  1864;  Star- 
F.  R.  893,  1900.  ling  v.  Plow  Works,  32  F.  R.  290, 

88  American  Graphophone  Co.  v.  1887. 


372  LICENSES  [chap.   XII. 

thai  he  could  have  Bel  up  in  the  absence  of  a  license.90 
An  exception  is  where  the  licensee  continues  to  hold 
forth  to  the  public  by  marking  the  articles  with  the  pat- 
ented stamp  that  he  is  manufacturing  under  the  patent.91 
And  similarly  where  the  license  contained  an  agreement  of 
the  licensee  not  to  contest  the  validity  of  the  patent92 
t  he  licensee  is  estopped  for  the  life  of  the  patent.  And  when 
such  a  covenant  is  made,  the  estoppel  continues  for  the 
full  term  of  the  patent  as  expressed  therein,  even  though 
the  patent  may  in  fact  expire  before  that  time  by  reason 
of  the  expiration  of  a  foreign  patent  for  the  same  inven- 
tion.93 If  the  licensor  selects  the  second  of  the  remedies 
mentioned,  he  must  sue  at  law; 94  except  where  he  sues 
an  assignee  of  the  licensee  for  royalties  accruing  before 
the  assignment,  in  which  case  the  action  for  their  recovery 
must  be  brought  in  equity.95  Wherever  the  licensor  sues 
for  the  promised  royalties,  the  defendant  may  introduce 
evidence  of  the  prior  art,  to  guide  the  court  to  the  con- 
struction of  the  patent,  and  thus  to  aid  in  the  ascertain- 

90  Woodworth  v.  Cook,  2  Blatch.  u3  United   Shoe   Mach.    Co.   v. 

160,    1850;    Burr    v.    Duryee,    2  Caunt,  134  F.  R.  239,  1904;  New 

Fisher,  283,  1862;  Brown  v.  Lap-  York  Phonograph  Co.  v.  National 

ham,  27  F.  R.  77,  1886;  Antisdel  Phonograph  Co.,  163  F.  R.  534, 

v.  Chicago  Hotel  Cabinet  Co.,  89  1908. 

F.  R.  311,  1898;  Tate  v.  Baltimore  94  Consolidated  Purifier  Co.  v. 

&  Ohio  Railroad,  229  F.  R.  141,  Wolf,  28  F.  R.  816,  1886;  Cran- 

1915.  dall  v.  Piano  Mfg.  Co.,  24  F.  R. 

91Regina    Music    Box    Co.    v.  738,    1885;   Washburn   &   Moen 

Newell,  131  F.  R.  606,  1904.  Mfg.  Co.  v.  Freeman  Wire  Co.,  41 

92  Dunham  v.  Bent,  72  F.  R,  60,  F.    R.   410,    1890;   Washburn   & 

1885;  Philadelphia  Creamery  Sup-  Moen  Mfg.  Co.  v.  Barbed  Wire 

ply  Co.  v.  Davis  &  Rankin  Bldg.  &  Co.,  42  F.  R.  675,  1890. 

Mfg.  Co.,  77  F.R.  879, 1896;  Con-  95  Goodyear    Shoe    Machinery 

solidated  Rubber  Tire  Co.  v.  Fin-  Co.   v.   Dancel,   119  F.   R.   692, 

lay  Rubber  Tire  Co.,  116  F.  R.  1902. 
638,  1902. 


CHAP.    XII.]  LICENSES  373 

ment  of  the  extent  of  those  doings  of  the  licensee,  whir}) 
are  subject  to  the  payment  of  royalties.90 

Where  a  license  to  make  and  sell  patented  articles,  con- 
ferred also  a  right  to  designate  those  articles  by  an  ar- 
bitrary identifying  name,  a  forfeiture  of  the  license,  will 
disentitle  the  licensee  to  use  that  name  to  designate  com- 
peting articles.97 

§  310.  No  license  is  assignable  by  the  licensee  to  an- 
other, unless  it  contains  words  which  show  that  it  was  in- 
tended to  be  assignable.98  The  most  suitable  phrase  with 
which  to  express  such  an  intention,  would  include  the 
word  " assigns" ;  but  in  one  case  it  was  held  that  the  words 
"legal  representatives"  would  answrer  the  purpose,  because 
the  license  fairly  indicated  that  the  parties  understood 
that  phrase  to  include  "assigns"  as  well  as  "exec- 
utors or  administrators."  99  Also  extrinsic  facts  and  cir- 
cumstances and  the  conduct  of  the  parties  may  give  an 
assignable  character  to  a  license  which  on  its  face  is  not 
assignable.100  And  unassignable  licenses  may  some- 
times be  invoked  by  persons  who  are  not  exactly  identical 
with  the  licensees.  A  railroad  company  which  was  formed 
by  the  consolidation  of  prior  railroad  companies,  may 
invoke  the  licenses  which  were  given  to  either  of  its  con- 
stituent corporations;  because  the  consolidated  company 

96  Andrews  v.  Landers,  72  F.  R.  ford,  150,  1858;  Searls  v.  Bouton, 
666,  1896.  12  F.  R.  143,  1882;  Bull  v.  Pratt, 

97  Adam  v.  Folger,  120  F.  R.  264,  1  Connecticut,  342,  1815;  Adams 
1903;  Bowers  v  Lake  Supe-  v.  Howard,  22  F.  R.  657,  1884; 
rior,  etc.,  Co.,  149  F.  R,  983,  Waterman  v.  Shipman,  55  F.  R, 
1906.  986,  1893. 

98  Troy  Factory  v.  Corning,  14  99  Hamilton  v.  Kingsbury,  15 
Howard,  193,  1852;  Rubber  Co.  v.  Blatch.  69,  1878. 

Goodyear,  9  Wallace,  788,  1869;  10°  Bowers      v.      Lake      Supe- 

Hapgood  v.  Hewitt,  119  U.  S.  226,  rior,  etc.,  Co.,  149  F.  R.  983, 
1886;  Baldwin  v.  Sibley,   1  Clif-      1906. 


37  I  l.l<  l  nses  [chap.   XII. 

is  a  successor  rather  than  an  assignee  of  those  companies. m 
So  also,  a  license  to  a  corporation,  will  protect  a  receiver 
who  is  authorized  to  manage  ils  business  during  its  em- 
barrassments.10'- Hut  a  receiver  who  is  appointed  in  sup- 
plementary proceedings,  under  the  New  York  Code  of 
Civil  Procedure,  to  settle  the  business  of  an  insolvent 
individual,  docs  not  acquire  any  right  to  an  unassignable 
license  which  belonged  to  the  insolvent  person."11 

Where  a  license  is  given  to  a  partnership,  composed  of 
several  persons,  and  where  that  partnership  is  dissolved, 
and  its  business  is  continued  by  one  of  the  partners,  that 
partner  is  entitled  to  that  license;  104  but  where  such  a 
dissolution  ends  the  business  of  the  partnership,  the 
license  lapses;  105  except  that  a  receiver  appointed  to  wind 
up  the  partnership  affairs,  may  invoke  the  license  to  pro- 
tect him  in  so  doing.106  But  a  license  to  one  person  gives 
no  right  to  any  partner  of  that  person,  or  to  any  corpora- 
tion organized  by  the  licensee;  107  although  of  course  such 
a  licensee  may  employ  such  agents  as  he  wishes  to  manu- 
facture the  patented  article  for  him;  108  and  if  it  author- 
izes the  licensee  to  act  only  at  a  particular  place,  it  will 
not  protect  any  of  his  doings  elsewhere.109  And  no  license 
to  a  man  and  any  partner  he  may  take,  will  protect  any 
assignee  of  that  man  when  acting  alone.110    Nor  does  an 

101  Lightner  v.  Railroad  Co.,  1  106  Montrose  v.  Mabie,  30  F.  R. 

Lowell,  338,  1869.  234,  1887. 

102Emigh    v.     Chamberlin,     2          107  Eclipse     Windmill     Co.     v. 

Fisher,    192,    1861;    Schmidt    v.  Windmill    Co.,    24    F.    R.    650, 

Central  Foundry  Co.,  218  F.  R.  1885. 
466,  1914.  108  Foster  Hose  Supporter  Co.  v. 

103  Waterman  v.  Shipman,  55  Thomas  P.  Taylor  Co.,  191  F.  R. 
F.  R.  985,  1893.  1003,  1912. 

104  Belding  v.  Turner,  8  Blatch.  109  Rubber  Co.  v.  Goodyear,  9 
321,  1871.  Wallace,  788,  1869. 

105  Haffcke  v.  Clark,  50  F.  R.  ""  Gibbs  v.  Hoefner,  19  F.  R. 
531,  1892.  324,  1884. 


CHAP.    XII.]  LICENSES  375 

unassignable  license  pass  to  an  executor  or  administrator 
of  a  deceased  licensee.111  The  non-assignability  of  a 
license  may  be  waived  by  the  licensor;  and  will  be  so 
waived  if  he  accepts  the  promised  royalty  from  the  as- 
signee of  the  license;  112  or  ratifies  the  transfer  of  the  li- 
cense, by  otherwise  treating  the  assignee  as  the  licensee  was 
entitled  to  be  treated.113 

A  reservation  in  an  assignment,  reserving  the  right  to 
the  assignor  to  operate  fully  under  the  patent  but  restrict- 
ing the  right  to  him  personally  will,  it  is  held,  prevent  the 
assignor  from  authorizing  a  third  party  to  operate  under 
the  license  when  the  assignor  has  no  interest  in  the  busi- 
ness otherwise  than  a  reservation  of  a  royalty.113"  It  is 
surmised  that  this  ruling  would  be  the  same  even  in  the 
absence  of  the  restriction  as  to  personal  use. 

Assignable  licenses  are  assignable  only  in  their  en- 
tirety; unless  they  expressly  or  impliedly  authorize  their 
assignment  in  parts,  and  to  a  plurality  of  persons.114 
And  the  royalties  payable  to  a  licensor  are  assignable  by 
him;  and  the  assignee's  rights  to  those  royalties  follow  the 
license,  when  it  is  assigned  to  a  person  who  has  notice  of 
those  rights.115  The  purchaser  of  a  license  takes  it  sub- 
ject to  all  the  restrictions  connected  therewith,  whether 
he  has  notice  of  those  restrictions  or  not; 116  and  subject 
to  liability  for  the  same  rate  of  royalty  for  his  doings, 

111  Oliver  v.  Chemical  Works,  545,  1843;  Consolidated  Fruit  Jar 
109  U.  S.  81,  1883.  Co.  v.  Whitney,  1  Bann.  &  Ard. 

112  Bloomer  v.  Gilpin,  4  Fisher,  356,  1874;  Adams  v.  Howard,  22 
55,  1859.  F.  R.  656,  1884;  Brush  Electric 

113  Hammond  v.  Organ  Co.,  92  Co.  v.  California  Electric  Light 
U.  S.  724,  1875;  Lane  &  Bodley  Co.,  52  F.  R.  964,  1892. 

Co.  v.  Locke,  150  U.  S.  196,  1893.  115  Grier  v.  Baynes,  46  F.  R.  524, 

1130  Lockjoint  Pipe  Co.  v.  Mel-  1891. 

ber,  234  F.  R.  319,  1916.  116  Chambers  v.  Smith,  5  Fisher, 

1U  Brooks  v.   Byam,   2  Story,  12,  1870. 


376  LICENSES  ('  il  \i'.    XTT. 

thai  the  licensee  would  have  had  to  pay  for  similar  acts;  "7 
Imi  not  subject  to  any  royally,  or  other  money,  <lii<-  from 
the  licensee  to  the  licensor,  at  the  time  of  the  assignment 

of  the  license."1" 

§  .'$11.  Purely  implied  licenses  may  arise  from  the  con- 
duct of  patentees  and  grantees  of  patents,  or  from  recov- 
eries by  them,  of  profits  or  damages  for  certain  classes  of 
infringements.  Many  of  the  rules  which  have  thus  far  in 
this  chapter,  been  stated  and  explained  in  connection  with 
purely  express  licenses,  and  in  connection  with  express 
licenses  having  implied  incidents,  are  also  applicable  to 
licenses  which  are  purely  implied.  Little  or  nothing  re- 
mains to  be  said  about  the  latter,  except  to  state  the  classes 
of  circumstances  out  of  which  they  are  found  to  spring. 

§  312.  Implied  licenses,  from  conduct  of  owners  of  pat- 
ent rights,  may  arise  out  of  any  one  of  a  considerable 
number  of  classes  of  facts;  but,  when  analyzed,  those 
facts  will  probably  always  be  found  to  thus  operate  by 
virtue  of  the  doctrines  of  acquiescence,  or  the  doctrines 
of  estoppel.  For  example,  where  a  patentee  joins  a  part- 
nership, the  business  of  which  involves  the  employment 
of  his  patented  invention,  an  implied  license  passes  to  the 
partnership,  as  part  of  the  partnership  property.119  And 
where  the  owner  of  a  patent  right  acquiesces  in  the  doings 
of  one  who  makes,  uses,  or  sells  specimens  of  the  patented 
invention,  and  where  that  owner  also  accepts  partial  com- 
pensation for  such  doings ;  a  license  will  be  implied,  unless 
the  case  also  presents  other  facts  which  negative  such  an 
implication.120    Payment  of  full  compensation  would  be 

117  Paper  Stock  Co.  v.  TJisin-  1U  Mueller  v.  Mueller,  95  F.  R. 
fecting     Co.,     147     Mass.     323,      155,  1899. 

1888.  120  Blanchard     v.     Sprague,     1 

118  Goodyear  v.  Rubber  Co.,  3  Cliff.  297,  1859;  Seibert  Oil  Cup 
Blatch.  449,  1856.  Co.  v.  Lubricator  Co.,  34  F.  R. 


CHAP.    XII,]  LICENSES  377 

a  still  more  convincing  ground  upon  which  to  base  an  im- 
plied license;  and  such  a  license  may  be  based  on  a  clear 
case  of  acquiescence,  even  if  no  special  payment  is  proved 
to  have  been  received.121  But  acquiescence  in  unpaid-for 
use,  does  not  always  imply  that  no  compensation  is  to  be 
expected.  Where  the  user  knew  of  the  patent,  and  the 
patentee  knew  of  the  use,  and  did  not  object  thereto; 
it  is  more  reasonable  to  imply  an  agreement  for  a  quantum 
meruit  or  a  royalty,  than  to  imply  that  the  patentee  do- 
nated the  use  of  his  invention  to  the  user,  or  to  imply 
that  the  user  unlawfully  seized  upon  the  invention  of  the 
patentee.122  In  the  absence  of  an  established  royalty, 
a  quantum  meruit  is  ascertained  by  general  and  expert 
evidence,  showing  what  a  reasonable  royalty  would  be.123 
In  no  case,  however,  can  a  license  be  implied  from  acqui- 
escence, unless  the  licensor  had  knowledge  of  the  thing 
acquiesced  in ;  nor  can  acquiescence  be  predicated  even  of 
knowledge  and  omission  to  interfere  with  the  doings  of 
the  infringer,  if  that  omission  is  fairly  accounted  for  on 
other  grounds. 

§  313.  If  the  owner  of  a  patent  right  were  to  explain 
the  patented  invention  to  a  person  ignorant  of  the  patent ; 
and  were  to  advise  him  to  make,  to  use,  or  to  sell  a  speci- 
men of  that  invention,  with  intent  to  induce  him  to  in- 
fringe the  patent  unknowingly;  and  if  that  person  were 
thereby  induced  to  incur  expense  in  infringing  or  in  pre- 
paring to  infringe  that  patent;  an  implied  license  would 
result  by  estoppel,  to  the  person  thus  misled.    The  same 

221,  1888;  Keyes  v.  Eureka  Min-  United  States,   23  0.   G.    1527, 

ing  Co.,  158  U.  S.  150,  1895.  1883;     Drainage      Construction 

121  Gill  v.  United  States,  160  Co.  v.  Chelsea,  41  F.  R.  47, 
U.  S.  437,  1896.  1890. 

122  United  States  v.  Palmer,  128  m  Deane  v.  Hodge,  35  Minn. 
U.    S.    269,    1888;    McKeever   v.  154,  1886. 


378  LICENSES  [chap.  xit. 

result  would  follow,  if  the  owner  of  a  patent  right  were  to 
conceal  the  existence  of  the  patent  from  a  person  who, 
to  his  knowledge,  was  about  to  infringe  it  unknowingly; 
if  that  concealment  were  done  with  intent  to  allow  that 
person  to  infringe;  and  if  that  person  incurred  expense 
in  infringing  or  in  preparing  to  infringe,  which  he  would 
not  have  incurred  if  he  had  known  of  the  patent.  And 
where  a  patentee  sees  an  infringing  article  sold  without 
authority  from  him,  but  makes  no  objection  to  the 
sale;  an  implied  license  by  estoppel  results  to  the  pur- 
chaser.124 

So,  also,  where  a  person  sells  a  patented  machine  to  an- 
other without  having  any  interest  in  or  under  the  patent, 
he  will  be  estopped  from  prosecuting  his  vendee  for  in- 
fringement on  the  basis  of  any  after  acquired  title.  Such 
estoppel,  however,  extends  only  to  machines  made  or  sold 
by  permission  or  with  the  co-operation  of  the  person  ac- 
quiring the  title.  For  instance,  a  partner  who,  after  dis- 
solution of  the  partnership,  acquires  a  patent  covering 
machines  made  by  the  partnership  is  not  estopped  from 
claiming  infringement  of  the  patent  by  machines  made  or 
sold  by  the  other  partner  after  the  dissolution.125  And 
where  a  person  sells  a  patent  which  employs  an  invention 
which  infringes  a  prior  patent;  the  person  selling  is  es- 
topped from  bringing  an  action  against  his  grantee  for 
that  infringement;  even  though  the  earlier  patent  is  ac- 
quired after  the  sale  of  the  later  patent.126  And  that 
estoppel  operates  as  a  license,  not  only  as  against  the  seller 
but  also  as  against  owners  in  common  with  him  of  the 

124  Societe   Fabriques,   etc.,    v.      Flasher  Mfg.  Co.,  161  F.  R.  129, 
Franco-American  Trading  Co.,  82      1908. 
F.  R.  439,  1897.  126  United  Printing  Machinery 

126  Dull    v.    Reynolds    Electric      Co.  v.  Cross  Paper  Feeder  Co.,  220 

F.  R.  322,  1915. 


CHAP.    XII.]  LICENSES  379 

prior  patent.127  And  where  an  inventor  before  applying 
for  a  patent  thereon,  sells  a  specimen  of  his  invention  to  a 
manufacturer  who  avowedly  buys  it  to  copy  it,  by  mak- 
ing other  specimens  for  sale,  and  where  the  seller  gives  the 
buyer  no  notice  of  intention  to  apply  for  a  patent  on  that 
invention ;  the  inventor  is  estopped  from  bringing  an  action 
on  such  a  patent  against  anyone,  for  using  or  selling  a 
specimen  of  the  invention  which  was  made  by  that  pur- 
chaser.128 And  so  is  the  patentee  estopped  when  he  has 
sold  to  the  defendant  the  necessary  parts  to  make  the 
patented  article,  even  as  respects  articles  made  by  the 
defendant  partly  from  parts  procured  from  a  stranger  if 
such  a  course  was  necessary  to  enable  the  defendant  to 
use  up  all  of  the  parts  supplied  by  the  patentee.129  But  a 
license  to  use  a  patented  device  may  not  be  implied  from 
the  fact  that  the  patentee  has  sold  to  the  alleged  infringer 
an  article  which  constitutes  one  element  of  the  patented 
combination,  where  the  article  is  capable  of  other  uses, 
even  though  the  article  is  usually  sold  by  the  patentee  as 
a  part  of  the  complete  patented  device.130 

§  313a.  Where  a  man  is  employed  by  another  party,  to 
work  in  a  particular  business  of  the  employer;  and  where, 
at  any  time  before  the  end  of  that  employment,  he  con- 
ceives an  invention  which  appears  to  be  applicable  to  his 
employer's  business;  and  where  during  that  employment, 
he  uses  the  property  of  the  employer  in  reducing  that 
invention  to  practice;  and  where  he  sees  the  employer 
thereupon  proceed  to  make,  use,  or  sell,  specimens  of  that 
invention,  and  does  not  thereupon  demand  any  present 

127  Curran  v.  Burdsall,  20  F.  R.  129  Auto  Spring  Repairer  Co.  v. 
835,  1883.  Grinberg,  175  F.  R.  799,  1910. 

128  Anderson  v.  Eiler,  50  F.  R.  13°  Davis  v.  Hall  Mammoth 
775,  1892.  Incubator  Co.,   200  F.   R.   958, 

1912. 


380  LICENSES  [CHAP.    Ml. 

or  prospective  compensation  therefor,  on  accounl  of  any 
present  or  prospective  patent  thereon;  an  implied  license, 
or  "  shop  right  "  results  to  the  employer,  under  any  patent 
that  may  be  granted  on  that  invention,  in  pursuance  of 
any  application  of  that  employed  man.131  Such  an  im- 
plied license  will  cover  all  the  specimens  of  the  invention 
which  the  employer  may  make  or  use  or  sell  during  the 
life  of  any  such  patent;  or  it  will  be  confined  to  some  or 
all  of  those  specimens  which  were  made  or  used  or  sold 
with  the  inventor's  knowledge,  during  the  time  of  his 
employment,  according  to  the  particular  equities  of  each 
case  in  which  such  a  license  is  implied.182  Where  an  em- 
ployee contracts  to  devote  his  time  to  the  "cheapening  of 
the  processes"  used  by  his  employer,  and  in  the  course 
of  his  employment  invents  a  process  relating  to  the  busi- 
ness of  his  employer  and  machines  for  carrying  out  the 
process,  and  thereafter  constructed  six  of  the  machines 
in  the  employer's  plant  at  the  latter's  expense,  a  license  to 
the  employer  is  implied  to  use  the  machines  and  to  replace 
them  and  also  to  practice  the  process,  even  though  there 
was  no  provision  in  the  contract  of  employment  that 
would  give  such  right.133  And  the  benefit  of  such  an 
implied  license  will  pass  to  the  assigns  or  the  successors 
of  the  employer;  according  to  the  particular  circumstances 
which  may  justify  such  passage  in  particular  cases,  re- 
spectively.134 

131  Gill  v.  United  States,   160  Underfeed  Stoker  Co.,  182  F.  R. 

U.  S.  426,  1896;  Blauvelt  v.  In-  642,  1910. 

terior  Conduit  &  Insulation  Co.,  132  Fuller  &  Johnson  Mfg.  Co.  v. 
80  F.  R.  906,  1897;  Wilson  v.  Bartlett,  68  Wis.  73,  1887;  Brick- 
American  Circular  Loom  Co.,  187  ill  v.  New  York,  112  F.  R.  70, 
F.  R.  840,  1911;  Schmidt  v.  Cen-  1901. 

tral  Foundry  Co.,  218  F.  R.  466,  133  Barber  v.  National  Carbon 

1914.  Co.,  129  F.  R.  370,  1904. 

See    American   Stoker    Co.    v.  134  Lane  &  Bodley  Co.  v.  Locke, 


CHAP.    XII.]  LICENSES  381 

§  314.  An  actual  recovery  of  a  full  royalty  for  making, 
and  selling  to  others  to  be  used,  operates  as  an  implied 
license  to  any  purchaser  of  the  thing  thus  made  and  sold, 
to  use  it  to  the  same  extent  that  he  could  lawfully  have 
done,  if  the  maker  had  been  licensed  to  make  and  sell  it.138 
But  where  there  is  a  recovery  of  mere  nominal  damages 
in  an  infringement  suit  for  unlicensed  making  and  selling 
a  specimen  of  a  patented  thing,  that  recovery  does  not 
operate  as  an  implied  license  authorizing  the  use  of  that 
specimen.136  And  where  an  action  in  equity,  against  an 
infringing  user  of  a  patented  thing,  is  brought  to  recover 
the  profits  which  he  derived  from  that  use;  that  action 
cannot  be  successfully  resisted  on  the  ground  that  the 
profits,  which  the  infringing  maker,  or  an  infringing  seller 
of  that  thing,  derived  from  his  infringement,  have  already 
been  recovered  from  him;  because  each  infringer  is  liable, 
in  equity,  for  his  own  profits  only; 137  and  because  the  pay- 
ment to  the  owner  of  a  patent,  of  the  profits  which  one 
infringer  has  reaped  from  infringement,  cannot  operate 
in  equity,  to  relieve  another  infringer  from  liability  to 
the  owner  of  the  patent  for  other  profits  which  he  derived, 
either  from  the  same  infringement  or  from  a  different 

150  U.  S.  193,  1893;  Withington-  98,    1886;    American    Bell    Tel- 

Cooley  Mfg.  Co.  v.  Kinney,  68  ephone  Co.  v.  Albright,  32  F.  R. 

F.  R.  500,  1895.  287,  1887. 

135  Spaulding  v.  Page,  1  Sawyer,  136  Birdsell  v.  Shaliol,  112  U.  S. 

709,  1871;  Gilbert  &  Barker  Mfg.  445,  1884;  New  York  Filter  Co.  v. 

Co.  v.  Bussing,   12  Blatch.  426,  Schwarzwalder,    58    F.    R.    579, 

1885;   Perrigo   v.    Spaulding,    13  1893;  Philadelphia  Trust  Co.  v. 

Blatch.  391,   1876;  Steam  Stone  Edison    Electric    Light    Co.,    65 

Cutter  Co.  v.  Mfg.  Co.,  17  Blatch.  F.  R.  554,  1895. 

31,    1879;  Booth  v.   Seevers,    19  137  Elizabeth  v.  Pavement  Co., 

O.  G.  1140,  1881;  Stutz  v.  Arm-  97  U.  S.   140,  1877;  Tatham  v. 

strong,  25  F.  R.  147,  1885;  Fisher  Lowber,    4    Blatch.    87,     1857; 

v.  Amador  Mine,  25  F.  R.  201,  Covert  v.  Sargent,  38  F.  R.  238, 

1885 ;  Tuttle  v.  Matthews,  28  F.  R.  1889. 


382  LICENSES  [chap.   XII. 

infringement,  connected  or  disconnected  therewith. 
Therefore  the  existence  of  a  decree  for  profits  against  a 
manufacturer  for  making  and  selling  a  patented  article, 
does  not  constitute  any  defence  to  a  suit  for  infringement 
brought  against  a  user  of  the  very  same  article.138  But 
if  a  patentee  makes  and  sells  under  his  patent,  a  recovery 
of  both  damages  and  profits  from  another  who  infringes 
by  making  and  selling  is  a  bar  to  further  suits  for  infringe- 
ment by  users  of  specific  articles  covered  by  the  decree.138" 
And  no  action  of  a  patentee,  by  way  of  suit,  or  by  way  of 
amicable  collection  of  money  for  infringement  against  an 
infringing  maker  or  seller  of  a  patented  article,  can  deprive 
any  licensee  of  the  patentee,  who  has  the  exclusive  right 
to  use  the  patented  article  in  a  given  territory,  of  the  right 
to  collect  money  from  the  user  in  that  territory,  of  the 
very  infringing  article  which  was  involved  in  the  suit  or 
settlement  between  the  patentee  and  the  manufacturer 
or  seller  of  that  article.  Recoveries  based  on  unlicensed 
use  of  a  patented  process  or  thing,  are  necessarily  confined 
to  such  use  as  occurred  before  the  suit  was  brought,  if  the 
action  be  at  law,  or  to  such  as  occurred  before  the  final  de- 
cree, if  the  action  is  in  equity;  and  it  follows  that  no  such 
recovery  can  operate  to  license  anyone  to  continue  such 
use,  or  to  begin  a  new  use  of  that  thing  or  that  process.139 
§  314a.  Section  1  of  the  so-called  Sherman  Anti-Trust 
Act  provides  that  "  every  contract,  combination  in  the 
form  of  trust  or  otherwise,  or  conspiracy  in  restraint  of 
trade  or  commerce,  among  the  several  States  or  with 
foreign  nations,  is  hereby  declared  to  be  illegal";  and 

138  Tuttle  v.  Matthews,  28  F.  R.  Searchlight  Horn  Co.,  225  F.  R. 

98,  1886.  497,  1915. 

13sa  Stebler  v.  Riverside  Heights  139  Suffolk    Co.    v.    Hayden,    3 

Orange  Growers  Ass'n,  214  F.  R.  Wallace,  315,  1865. 
550,  1914;  Sherman,  Clay  &  Co.  v. 


CHAP.    XII.]  LICENSES  383 

Section  2  of  the  same  Act  provides  that  "every  person 
who  shall  monopolize,  or  attempt  to  monopolize  any  part 
of  the  trade  or  commerce,  among  the  several  States,  or 
with  foreign  nations,  shall  be  deemed  guilty  of  a  mis- 
demeanor." 140 

Since  the  fourth  edition  of  this  book  the  question  has 
arisen  as  to  what  extent,  if  any,  this  statute  circumscribes 
or  limits  in  any  way  the  monopoly  which  a  patentee  pos- 
sesses by  virtue  of  the  ownership  of  a  patent.  Putting 
the  question  in  another  way  it  is  as  to  what  extent  the 
owner  of  a  patent  may  legitimately  create  restrictions  on 
the  resale  or  use  in  the  hands  of  another  of  articles  made 
under  his  patent  either  by  himself  or  by  one  licensed  to 
manufacture  under  his  patent. 

It  has  been  many  times  said,  as  in  National  Phono- 
graph Co.  v.  Schlagel,141  that  "it  rests  with  the  owner  to 
say  what  part  of  (his)  property  he  will  reserve  to  himself 
and  what  part  he  will  transfer  to  others  and  upon  what 
terms  he  will  make  the  transfer,"  or,  as  expressed  by  the 
Supreme  Court  in  another  way  ' '  the  general  rule  is  abso- 
lute freedom  in  the  use  or  sale  of  rights  under  the  patent 
laws  of  the  United  States.  The  very  object  of  these  laws 
is  monopoly  and  the  rule  is  with  few  exceptions  that  any 
conditions,  which  are  not  in  their  very  nature  illegal  with 
regard  to  this  kind  of  property,  imposed  by  the  patentee 
and  agreed  to  by  the  licensee  for  the  right  to  manufacture 
or  use  or  sell  the  article,  will  be  upheld  by  the  courts. 
The  fact  that  the  conditions  in  the  contracts  keep  up 
the  monopoly  of  fixed  prices  does  not  render  them  ille- 
gal." 142 

140  Act  of  July  2,  1890,  Chapter  v.  Schlagel,  128  F.  R.  733, 
647,  26  Stat.  209.  1904. 

141  National    Phonograph    Co.  142  Bement  v.  National  Harrow 

Co.,  186  U.  S.  70,  1902. 


:;si  LICENSES  [chap.   Ml. 

§  3146.  Those  holdings  and  others  similar  to  them  ob- 
viously mean  thai  in  legal  conception  the  owner  of  a 
patent  is  possessed  of  a  certain  aggregation  of  rights 
which  are  assembled  in  his  statutory  rights  to  exclude 
others  from  making,  selling  or  using  articles  within  the 
scope  of  his  patent,  and  with  those  holdings  as  the  prem- 
ises the  logical  deduction  is  that  he  may  grant  to  others 
the  right  to  make  under  certain  circumstances,  the  right 
to  use  under  certain  circumstances,  or  the  right  to  sell 
under  certain  circumstances,  retaining  to  himself  or  be- 
stowing as  he  sees  fit,  the  right  to  make,  use,  or  sell  all  un- 
der other  circumstances. 

§  314c.  Prior  to  the  decision  of  Bauer  v.  O'Donnell,143 
known  as  the  "Sanatogen"  case,  there  was  practically 
no  judicial  dissent  from  the  proposition  stated  in  the 
foregoing  section.  In  Bement  v.  National  Harrow  Co., 
which  was  the  leading  case  in  the  Supreme  Court  where 
the  Dick  case  was  decided,  the  owner  of  the  patent  granted 
a  license  to  a  manufacturer  to  manufacture  harrows  under 
the  patent.  The  suit  against  the  manufacturer  was  in  the 
form  of  one  to  recover  damages  for  a  violation  of  licenses 
and  to  restrain  further  violation  of  them.  Mr.  Justice 
Peckham  said  in  his  opinion:  "but  that  statute  (Sherman 
Anti-Trust  Law)  clearly  does  not  refer  to  that  kind  of  a 
restraint  of  interstate  commerce  which  may  arise  from 
reasonable  and  logical  conditions  imposed  upon  the  as- 
signee or  licensee  of  a  patent  by  the  owner  thereof  re- 
stricting the  terms  upon  which  the  article  may  be  used, 
and  the  price  to  be  demanded  therefor.  Such  a  construc- 
tion of  the  Act  we  have  no  doubt  was  never  contem- 
plated by  its  framers."  He  further  said:  "The  owner  of  a 
patented  article  can,  of  course,  charge  such  price  as  he 
may  choose,  and  the  owner  of  a  patent  may  assign  it 
143  Bauer  v.  O'Donnell,  229  U.  S.  1,  1913. 


CHAP.    XII.]  LICENSES  385 

or  sell  the  right  to  manufacture  and  sell  the  article  pat- 
ented upon  the  condition  that  the  assignee  shall  charge 
a  certain  amount  for  such  article.  The  Bement  case 
therefore  stands  squarely  for  the  proposition  that  when 
there  is  a  license  to  manufacture  and  sell  under  a  patent, 
a  provision  in  the  license  agreement  that  the  articles 
made  under  the  patent  shall  be  sold  at  a  fixed  price,  is  not 
contrary  to  the  Sherman  Anti-Trust  Law  and  this  hold- 
ing has  not  been  overruled." 

§  Slid.  The  next  case  directly  involving  the  question 
under  discussion  that  came  before  the  Supreme  Court 
was  the  Henry  v.  Dick  case.144  The  essential  facts  in- 
volved in  that  case  were  that  the  owner  of  the  patent  in- 
volved, who  was  also  a  manufacturer  of  mimeographs, 
made  under  the  patent,  affixed  to  his  machines  a  notice 
stating  that  the  machine  was  sold  "with  the  license  re- 
striction that  it  may  be  used  only  with  the  stencil  paper, 
ink  and  other  supplies"  made  by  the  manufacturer,  and 
that  the  defendant,  a  dealer  in  inks,  sold  a  can  of  ink  to  a 
purchaser  of  one  of  the  mimeographs,  both  the  dealer  and 
the  purchaser  having  actual  knowledge  of  the  license 
restriction  and  of  the  intention  of  the  purchaser  to  use  the 
ink  on  the  patented  mimeograph.  It  further  appeared 
that  the  machine  had  been  purchased  for  a  cash  considera- 
tion, but  which  yielded  no  profit  to  the  manufacturer 
whose  method  it  was  to  make  its  profits  on  the  sale  of  the 
inks  and  supplies.  Five  only  of  the  nine  judges  who  sat 
upheld  the  restriction.  As  the  suit  was  for  infringement 
it  is  obvious  that  the  court  considered  that  the  patentee 
by  virtue  of  the  license  restriction  had  retained  to  him- 
self some  part  of  the  monopolistic  rights  granted  to  him 
by  the  patent. 

To  the  objection  that  the  entire  title  in  the  patented 
144  Henry  v.  Dick  Co.,  224  IT.  S.  1,  1912. 


380  LICENSES  [CHAP.    XII. 

article  had  passed  by  virtue  of  the  sale  and  that  there- 
fore there  was  no  patent  right  left  in  the  patentee  which 
the  defendant  could  infringe,  Justice  Lurton  said: 

"The  argument  for  the  defendants  ignores  the  dis- 
tinction between  the  property  right  in  the  materials 
composing  a  patented  machine,  and  the  right  to  use  for 
the  purpose  and  in  the  manner  pointed  out  by  the  patent. 
The  latter  may  be  and  often  is  the  greater  element  of 
value,  and  the  buyer  may  desire  it  only  to  apply  to  some 
or  all  of  the  uses  included  in  the  invention.  But  the  two 
things  are  separable  rights.  If  sold  unreservedly  the  right 
to  the  entire  use  of  the  invention  passes,  because  that  is  the 
implied  intent;  but  this  right  to  use  is  nothing  more  nor 
less  than  an  unrestricted  license  presumed  from  an  un- 
conditional sale.  A  license  is  not  an  assignment  of  any 
interest  in  the  patent.  It  is  a  mere  permission  granted 
by  the  patentee.  It  may  be  a  license  to  make,  sell  and 
use  or  it  may  be  limited  to  any  one  of  these  separable 
rights.  If  it  be  a  license  to  use,  it  operates  only  as  a  right 
to  use  without  being  liable  as  an  infringer.  If  a  licensee 
be  sued  he  can  escape  liability  to  the  patentee  for  the  use 
of  his  invention  by  showing  that  the  use  is  within  his 
license.  But  if  his  use  be  one  prohibited  by  the  license, 
the  latter  is  of  no  avail  as  a  defence." 

A  situation  where  the  possessor  of  a  patented  machine 
had,  without  the  permission  of  the  owner  of  the  patent, 
manufactured  it  for  himself  and  subsequently  obtained 
permission  from  the  patentee  to  use  it  in  a  particular 
manner,  or  for  a  particular  purpose,  may  serve  to  bring 
out  more  strongly  the  distinction  mentioned  by  the  court. 
In  such  a  case  it  would  hardly  be  open  to  question  that 
permission  by  the  owner  of  the  patent  would  carry  to  the 
possessor  of  the  machine  only  the  right  to  use  it  in  the 
manner  provided,  although  title  to  the  physical  machine 


CHAP.    XII.]  LICENSES  387 

would  at  all  times  have  belonged  to  the  maker  of  the  ma- 
chine. 

§  314e.  The  question  next  came  before  the  Supreme 
Court  in  the  case  of  Standard  Sanitary  Mfg.  Co.  v.  United 
States.143  This  case  was  a  prosecution  under  the  Sherman 
Anti-Trust  Law.  The  sixteen  corporate  defendants  were 
the  manufacturers  of  about  85%  of  the  enameled  iron 
ware  made  in  the  United  States.  Originally  the  Standard 
Co.  was  the  manufacturer  of  about  50%  of  such  ware  and 
was  the  owner  of  a  certain  process  patent  for  enameling 
under  which  it  operated.  The  remaining  manufacturers 
were,  however,  compelled  to  use  older  and  inferior  proc- 
esses of  enameling  with  the  result  that  they  produced 
a  large  quantity  of  "seconds"  or  inferior  ware,  which, 
however,  came  into  competition  with  the  high  grade  ware 
made  by  the  Standard  Co.  At  least  such  was  the  conten- 
tion of  the  defendants,  who  also  contended  that  in  form- 
ing the  combination  attacked  by  the  Government,  they 
produced  a  healthy  condition  in  the  trade,  eliminating 
"seconds"  and  making  possible  free  competition  in  equal 
grade  ware. 

The  essence  of  the  combination  involved  in  the  case  so 
far  as  the  Sherman  Law  was  concerned,  was  a  license 
agreement  substantially  as  follows:  Right  was  granted 
to  the  licensee  to  use  the  process  of  the  patent,  royalties 
of  a  fixed  sum  were  established,  preferential  discounts  from 
the  regular  selling  prices  were  announced,  a  commission 
was  established  to  have  supervision  of  all  the  royalties 
and  transactions  between  the  parties  to  the  agreements, 
covenants  were  entered  into  to  adhere  to  and  maintain 
the  conditions,  regulations  and  prices  and  preferential 
discounts  established  by  the  licensor,  and  provision  was 
made  for  the  return  of  eighty  per  cent  of  the  royalties 

145  Standard  Sanitary  Mfg.  Co.  v.  United  States,  226  U.  S.  20,  1912. 


388  LICENSES  [CH  U\    XII. 

paid  ii'  the  agreements  should  be  complied  with  by  ;ill  con- 
cerned. Each  licensee  agreed  to  sell  no  "seconds." 
There  was  also  a  jobbers'  license  agreement  that  required 
the  purchaser  to  pa}'  the  price  fixed  and  in  short  the  plan 
sought  to  be  put  into  execution  was  to  control  the  prices 
of  enamel  iron  ware  from  the  manufacturer  to  the  ulti- 
mate consumer  by  means  of  license  restrictions. 

Mr.  Justice  McKenna  who  rendered  the  opinion,  said: 
"In  this  statement  certain  things  are  prominent.  Before 
the  agreements  the  manufacturers  of  enameled  ware  were 
independent  and  competitive.  By  the  agreements  they 
were  combined,  subjected  themselves  to  certain  rules  and 
regulations,  among  others  not  to  sell  their  product  to  the 
jobbers  except  at  a  price  fixed  not  by  trade  and  competi- 
tive conditions  but  by  the  decision  of  the  committee  of  six 
of  their  number,  and  zones  of  sales  were  created.  And  the 
jobbers  were  brought  into  the  combination  and  made  its 
subjection  complete  and  its  purpose  successful.  Unless 
they  entered  the  combination  they  could  obtain  no  enam- 
eled ware  from  any  manufacturer  who  was  in  the  combi- 
nation, and  the  condition  of  entry  was  not  to  resell  to 
plumbers  except  at  the  prices  determined  by  the  manufac- 
turers. The  trade  was,  therefore,  practically  controlled 
from  producer  to  consumer,  and  the  potency  of  the  scheme 
was  established  by  the  co-operation  of  85%  of  the  manu- 
facturers and  their  fidelity  to  it  was  secured  not  only  by 
trade  advantages  but  by  what  was  practically  a  pecuniary 
penalty,  not  inaptly  termed  in  the  argument,  'cash  bail.' 
The  royalty  for  each  furnace  was  $5.00,  80%  of  which 
was  to  be  returned  if  the  agreement  was  faithfully  ob- 
served; it  was  to  be  ' forfeited  as  a  penalty'  if  the  agree- 
ment was  violated.  And  for  faithful  observance  of  their 
engagements  the  jobbers,  too,  were  entitled  to  rebates 
from  their  purchases.    It  is  testified  that  90%  of  the  job- 


CHAP.    XII.  |  LICENSES  389 

bers  in  number  and  more  than  90%  in  purchasing  power 
joined  the  combination. 

"The  agreements  clearly,  therefore,  transcended  what 
was  necessary  to  protect  the  use  of  the  patent  or  the 
monopoly  which  the  law  conferred  upon  it.  They  passed 
to  the  purpose  and  accomplished  a  restraint  of  trade 
condemned  by  the  Sherman  law.  It  had,  therefore,  a 
purpose  and  accomplished  a  result  not  shown  in  the 
Bement  case.  There  was  a  contention  in  that  case  that 
the  contract  of  the  National  Harrow  Company  with 
Bement  &  Sons  was  part  of  a  contract  and  combination 
with  many  other  companies  and  constituted  a  violation 
of  the  Sherman  law,  but  tjie  fact  was  not  established  and 
the  case  was  treated  as  one  between  the  particular  parties, 
the  one  granting  and  the  other  receiving  a  right  to  use  a 
patented  article  with  conditions  suitable  to  protect  such 
use  and  secure  its  benefits.  And  there  is  nothing  in 
Henry  v.  A.  B.  Dick  Co.,  224  U.  S.  1,  which  contravenes 
the  views  herein  expressed." 

§  314/.  In  Bauer  v.  O'Donnell,146  the  sole  licensee  under 
the  patent  sold  a  food  composition  known  as  Sanatogen 
made  under  the  patent,  subject  to  the  following  license 
restriction : 

"This  size  package  of  Sanatogen  is  licensed  by  us  for 
sale  and  use  at  a  price  not  less  than  one  dollar  (SI. 00). 
Any  sale  in  violation  of  this  condition,  or  use  when  so  sold, 
will  constitute  an  infringement  of  our  patent  No.  601,995, 
under  which  Sanatogen  is  manufactured,  and  all  persons 
so  selling  or  using  packages  or  contents  will  be  liable  to 
injunction  and  damages. 

"A  purchase  is  an  acceptance  of  this  condition.  All 
rights  revert  to  the  undersigned  in  the  event  of  violation. 
The  Bauer  Chemical  Co." 

>*  Bauer  v.  O'Donnell,  229  U.  S.  1,  1913. 


390  LICENSES  [CHAP.    XII. 

Certain  jobbers  purchased  packages  <>f  the  Sanatogen 
from  the  licensee  and  resold  them  to  the  defendant,  a 
retail  dealer.  The  defendant  in  turn  sold  them  to  con- 
sumers at  less  than  one  dollar  a  package,  an  ad  whk-h  was 
charged  by  the  owner  of  the  patent  as  being  an  infringe- 
ment. The  matter  came  before  the  Supreme  Courl 
on  a  certification  from  the  Court  of  Appeals.  The  ques- 
tion certified  was  as  follows:  "Did  the  acts  of  the  appellee 
(defendant)  in  retailing  at  less  than  the  price  fixed  in  said 
notice,  original  packages  of  'Sanatogen'  purchased  of 
jobbers  as  aforesaid,  constitute  infringement  of  appel- 
lant's (plaintiff's)  patent?" 

Mr.  Justice  Day,  in  his  opinion,  paraphrased  the  ques- 
tion as  follows:  "May  a  patentee  by  notice  limit  the  price 
at  which  future  retail  sales  of  the  patented  articles  may  be 
made,  such  articles  being  in  the  hands  of  a  retailer  by 
purchase  from  a  jobber  who  has  paid  to  the  agent  of  the 
patentee  the  full  price  asked  for  the  article  sold?"  The 
decision,  holding  that  when  the  owner  of  the  patent  had 
received  from  the  jobber  the  full  price  for  the  packages 
he  had  deprived  himself  of  all  rights  secured  by  his  patent 
monopoly,  was  based  on  the  consideration  of  Section 
4884  of  the  Revised  Statutes  which  grants  to  the  patentee 
"the  exclusive  right  to  make,  use  and  vend  the  invention 
or  discovery."  The  Patent  Statute  was  held  to  be  similar 
in  its  purpose  and  meaning  to  the  Copyright  Statute 
(Section  4952  of  the  Revised  Statutes)  which,  as  the  court 
said:  "secures  to  an  author,  inventor,  designer  or  propri- 
etor of  books,  maps,  charts  or  dramatic  or  musical  com- 
positions the  sole  liberty  of  printing,  reprinting,  publish- 
ing, completing,  copying,  executing,  finishing  and  vending 
them."  The  meaning  of  the  word  "vend"  in  the  Pat- 
ent Statute  and  "vending"  in  the  Copyright  Statute, 
was  held   to  be   identical,   the    court    saying:   "So    far 


CHAP.    XII.]  LICENSES  391 

as  the  use  of  the  terms  'vend'  and  'vending'  is  con- 
cerned, the  protection  intended  to  be  secured  is  sub- 
stantially identical.  The  sale  of  a  patented  article  is 
not  essentially  different  from  the  sale  of  a  book.  In 
each  case  to  vend  is  to  part  with  the  thing  for  a  con- 
sideration." 

§  314:g.  There  is,  however,  one  distinction  between  the 
statutes  in  the  respect  that  the  Patent  Statute  gives  the 
inventor  the  exclusive  right  to  "use,"  a  fact  which  was 
strongly  urged  upon  the  court  by  the  plaintiff,  and  the 
Henry  v.  Dick  Co.  case  was  cited  in  support  of  the  con- 
tention. The  court  distinguished  the  case  from  the  Henry 
v.  Dick  case  and  also  from  the  case  of  Bobbs-Merrill  v. 
Straus,147  by  saying  with  reference  to  the  facts  in  those 
cases:  " While  the  title  was  transferred,  it  was  a  qualified 
title,  giving  the  right  to  use  the  machine  only  with  certain 
specified  supplies."  In  response  to  the  contention  that  the 
facts  in  the  Bauer  v.  O'Donnell  case  dealt  with  the  use 
of  the  invention,  because  the  notice  stated  that  the  pack- 
age was  licensed  "for  sale  and  use  at  a  price  not  less  than 
One  Dollar  ($1.00),"  the  court  said:  "The  jobber  from 
whom  the  appellee  purchased  had  previously  bought  at 
a  price  which  must  be  deemed  to  have  been  satisfactory, 
the  packages  of  Sanatogen  afterwards  sold  to  the  appellee. 
The  patentee  had  no  interest  in  the  proceeds  of  the  subse- 
quent sales,  no  right  of  any  royalty  therein  or  to  partici- 
pation in  the  proceeds  thereof.  The  packages  were  sold 
with  as  full  and  complete  title  as  any  article  could  have 
when  sold  in  the  open  market,  excepting  only  the  attempt 
to  limit  the  sale  or  use  when  sold  for  not  less  than  one 
dollar.  In  other  words,  the  title  transferred  was  full  and 
complete  with  an  attempt  to  reserve  the  right  to  fix  the 
price  at  which  subsequent  sales  could  be  made.  There  is 
147  Bobbs-Merrill  Co.  v.  Straus,  210  U.  S.  339,  1908. 


392  LICENSES  [chap.    XII. 

no  showing  of  a  qualified  sale  for  less  than  value  for  lim- 
ited use  with  other  articles  only,  as  was  shown  in  the  Dick 
case.  There  was  no  transfer  of  a  limited  right  to  use  this 
invention,  and  to  call  the  sale  a  license  to  use  is  a  mere 
play  upon  words. 

"The  real  question  is  whether  in  the  exclusive  right 
secured  by  statute  to  'vend'  a  patented  article  there  is 
included  the  right,  by  notice,  to  dictate  the  price  at  which 
subsequent  sales  of  the  article  may  be  made.  The  patentee 
relies  solely  upon  the  notice  quoted  to  control  future  prices 
in  the  resale  by  a  purchaser  of  an  article  said  to  be  of  great 
utility  and  highly  desirable  for  general  use.  The  appellee 
and  the  jobbers  from  whom  he  purchased  were  neither 
the  agents  nor  the  licensees  of  the  patentee.  They  had  the 
title  to,  and  the  right  to  sell,  the  article  purchased  without 
accounting  for  the  proceeds  to  the  patentee  and  without 
making  any  further  payment  than  had  already  been  made 
in  the  purchase  from  the  agent  of  the  patentee.  Upon 
such  facts  as  are  now  presented  we  think  the  right  to  vend 
secured  in  the  patent  statute  is  not  distinguishable  from 
the  right  of  vending  given  in  the  copyright  act.  In  both 
instances  it  was  the  intention  of  Congress  to  secure  an 
exclusive  right  to  sell,  and  there  is  no  grant  of  a  privilege 
to  keep  up  prices  and  prevent  competition  by  notices 
restricting  the  price  at  which  the  article  may  be  resold. 
The  right  to  vend  conferred  by  the  patent  law  has  been 
exercised,  and  the  added  restriction  is  beyond  the  pro- 
tection and  purpose  of  the  act.  This  being  so,  the  case  is 
brought  within  that  line  of  cases  in  which  this  court  from 
the  beginning  has  held  that  a  patentee  who  has  parted 
with  a  patented  machine  by  passing  title  to  a  purchaser 
has  placed  the  article  beyond  the  limits  of  the  monopoly 
secured  by  the  patent  act." 

§  314/i.  Next  came  the  case  of  Victor  Talking  Machine 


CHAP.    XII.]  LICENSES  393 

Co.  v.  Straus, Hs  decided  by  the  Court  of  Appeals  for  the 
second  circuit  in  which  it  appeared  that  a  manufacturer 
of  talking  machines  affixed  thereto  a  very  elaborate  notice 
of  license  restrictions  which  was  construed  by  the  court 
as  a  grant  of  "only  the  right  to  use  the  particular  machine 
unaltered  without  parts  not  manufactured  by  the  Victor 
Co.,  maker  and  owner  of  the  patents,  and  only  with  rec- 
ords and  needles  made  by  the  Victor  Co.,  and  to  use  it 
only  so  long  as  the  notice,  unaltered  and  unerased,  remains 
on  the  machine."  The  term  for  which  the  right  to  use 
was  granted  was  a  fixed  period,  "for  the  term  of  the  pat- 
ent having  the  longest  term  to  run."  The  court  said: 
"The  character  of  the  use  is  not  the  same  in  all  cases: 

"1.  To  'Victor  distributors'  there  is  given  a  right  to 
use  only  for  'demonstrating.' 

"As  the  sole  result  of  demonstration  is  to  induce  the 
public  to  get  the  machines  it  may  be  assumed  that  these 
distributors  are  paid  by  the  Victor  Company. 

"2.  To  regularly  licensed  'Victor  dealers'  there  is  also 
given  a  right  to  use  for  '  demonstrating '  purposes.  Some- 
times conveyance  of  such  right  to  use  is  made  directly  by 
the  Victor  Company,  to  the  licensed  Victor  dealer.  Some- 
times the  conveyance  is  made  to  the  'dealer'  by  the 
'  demonstrator,'  who  by  the  terms  of  the  notice  is  expressly 
authorized  to  convey  such  right  to  the  dealer.  These 
dealers,  of  course,  do  not  use  these  machines  for  their 
personal  enjoyment;  their  demonstrations  are  given  to 
induce  the  public  to  apply  for  machines  and  they  are 
paid  by  a  commission  on  the  amount  paid  by  every  person 
who  may  be  induced  by  them  to  take  one. 

"3.  To  the  public,  i.  e.,  to  individuals  who  wish  to  use 
the  machines  generally." 

Every  machine  sold  was  paid  for  in  a  lump  sum  which 
i«  Victor  Talking  Machine  Co.  v.  Straus,  230  F.  R.  449,  1916. 


M4  LICENSES  [CHAP.    XII. 

the  notice  described  as  a  royalty,  although  it  was  not  ex- 
pected or  understood  that  any  further  payments  should 
be  made.  The  notice  stated  that  the  manufacturer  re- 
served title  to  the  machine  and  could  take  it  into  his 
possession  upon  breach  of  any  of  the  restrictions.  It 
did  not  appear  in  the  case,  as  it  did  in  the  Dick  case,  that 
the  machines  were  sold  at  less  than  cost  with  the  ex- 
pectation upon  the  part  of  the  manufacturer  of  making 
his  profit  out  of  the  sale  on  supplies.  The  defendant 
was  a  purchaser  of  talking  machines  in  the  open  market 
and  the  bill  was  brought  to  enjoin  him  from  selling  the 
talking  machines  at  less  than  the  price  fixed  by  the  no- 
tice. The  bill  was  sustained  on  the  ground  that  the  plain- 
tiff had  never  passed  complete  title  to  any  of  the  talking 
machines,  the  court  saying:  "A  study  of  these  various 
documents  leads  to  the  conclusion  that  complainant  has 
undertaken  to  avoid  making  such  a  sale  of  its  machine, 
as  would  permanently  pass  it  beyond  any  further  control 
by  itself.  We  think  it  has  succeeded  in  so  doing;  this  is 
not  a  sale  outright,  or  a  conditional  or  restricted  sale  or 
any  sale  at  all. 

"  Under  the  authorities  the  owner  of  a  patent  who  man- 
ufactures machines  under  such  patent  can  give  the  right 
to  use  to  whom  he  pleases  upon  what  conditions  he  may 
choose  to  impose.  Some  of  these  conditions  may  involve 
pecuniary  return,  such  as  royalties,  rentals  for  fixed  pe- 
riods, specified  lump  sum  compensation  for  the  whole 
period.  We  do  not  see  why  he  may  not  give  to  one  person 
a  more  restricted  right  to  use  than  he  does  to  another. 
The  Dick  case,  224  U.  S.  1,  established  the  proposition  that 
a  restriction  to  use  only  with  other  products  of  the  pat- 
entee is  legitimate.  Of  course  the  giving  to  any  person 
of  a  'right  to  use'  things  of  this  sort  is  an  idle  thing,  unless 
the  person  is  also  supplied  with  the  physical  thing  to  be 


CHAP.    XII.]  LICENSES  395 

used,  to  hold  the  same  while  he  is  enjoying  the  use  and 
complying  with  its  terms." 

§  314*.  It  may  be  noted  that  in  the  Straus  case  the  court 
gave  no  consideration  to  the  fact  that  it  did  not  appear 
that  the  plaintiff  sold  its  talking  machines  at  less  than 
cost  or  that  it  depended  for  its  profits  on  the  future  sale 
of  supplies. 

Since  the  decision  in  the  Dick  case  legislation  has 
largely  nullified  its  practical  results  so  far  as  they  favor 
those  undertaking  to  impose  use  restrictions.  If  the  effect 
of  such  a  restriction  is  to  "substantially  lessen  compe- 
tition or  tend  to  create  a  monopoly  in  any  line  of  com- 
merce," the  plan  comes  within  the  prohibition  of  the  so- 
called  Clayton  Law  in  effect  October  15,  1914. 149  Sec- 
tion 3  of  that  law  provides  as  follows: 

"That  it  shall  be  unlawful  for  any  person  engaged  in 
commerce,  in  the  course  of  such  commerce  to  lease  or 
make  a  sale  or  contract  for  sale  of  goods,  wares,  merchan- 
dise, machinery,  supplies,  or  other  commodities,  whether 
patented  or  unpatented,  for  use,  consumption  or  resale 
within  the  United  States,  or  any  territory  thereof  .  .  . 
on  the  condition,  agreement  or  understanding  that  the 
lessee  or  purchaser  thereof  shall  not  use  or  deal  in  the 
goods,  wares,  merchandise,  machinery,  supplies  or  other 
commodities  of  a  competitor  or  competitors  of  the  lessor 
or  seller,  where  the  effect  of  such  lease,  sale  or  contract 
for  sale  or  such  condition,  agreement  or  understanding 
may  be  to  substantially  lessen  competition  or  tend  to 
create  a  monopoly  in  any  line  of  commerce."  Act  of  Octo- 
ber 15,  1914,  c.  323,  Section  3,  38  Stat.  731. 

§  314j.  The  construction  of  this  Act  in  one  aspect  came 
before  the  Court  of  Appeals,  second  circuit,  in  Motion 

149  Act  of  October  15,  1914,  Chapter  323,  Sec.  3,  38  Stat. 
731. 


.'W(>  LICENSES  [CHAP.    XII. 

Picture  Patents  Co.  v.  Universal  Film  Co.,150  in  which 
a  license  notice  was  affixed  to  a  machine  for  projecting 
motion  pictures,  restricting  the  machine  to  use  only  with 
films,  whether  patented  or  unpatented,  manufactured  by 
the  plaintiff.  It  appeared  from  the  testimony  in  the  case 
that  the  plaintiff  had  a  monopoly  under  its  patents  on 
projecting  machines  with  the  result  that  it  would  have  a 
consequent  monopoly  of  the  film  business  if  the  restric- 
tion were  enforced.  The  court  held  that  for  that  reason 
the  license  restriction  came  within  the  prohibition  of 
the  Clayton  Law.  The  Clayton  Law  was  not,  however, 
the  sole  ground  of  the  decision,  the  court  holding  that  the 
case  came  within  the  doctrine  of  Bauer  v.  O'Donnell  for 
the  reason  that  the  title  to  the  machine  had  once  passed 
by  virtue  of  the  sale.  It  may  be  noted  that  likewise  in 
the  Dick  case  did  the  title  of  the  patented  mimeograph 
pass  by  the  sale,  at  least  to  as  great  an  extent  as  the  pro- 
jecting machine  in  the  Motion  Picture  Patents  Co.  case. 
The  case  was  distinguished  from  the  case  of  Victor  Talk- 
ing Machine  Co.  v.  Straus  for  the  same  reason. 

As  this  book  goes  to  press,  the  decisions  in  both  the 
Victor  Talking  Machine  Co.  case  and  the  Motion  Picture 
Patents  Co.  case  are  being  reviewed  by  the  Supreme 
Court.  However,  the  law  to  date  appears  to  be  that 
the  patentee  may,  if  he  chooses,  reserve  to  himself  title  to 
the  patented  article,  in  which  event  he  may  impose  such 
restrictions  as  he  pleases. 

Other  cases  following  or  based  upon  the  Supreme  Court 
decisions  cited  in  the  foregoing  sections,  are  found  in  the 
note.151 

150  Motion  Picture  Patents  Co.  Co.  v.  Goldsmith  Bros.,  190  F.  R. 
v.  Universal  Film  Co.,  235  F.  R.  205,  1911;  Winchester  Repeating 
398,  1916.  Arms  Co.  v.  Buengar,  199  F.  R. 

151  Automatic  Pencil  Sharpener  7S6,  1912;  Crown  Cork  &  Seal  Co. 


CHAP.    XII.] 


LICENSES 


•M7 


r.  Brooklyn  Bottle  Stopper  Co., 
200  F.  R.  592,  1912;  Waltham 
Watch  Co.  v.  Keene,  202  F.  R. 
225,  1913;  Robt.  H.  Ingersoll  & 
Bro.  v.  McColl,  204  F.  R.  147, 
1913;  Free  Sewing  Machine  Co. 
v.  Bry-Block  Mercantile  Co.,  204 
F.  R.  632,  1913;  Kellogg  Toasted 
Cornflake  Co.  v.  Buck,  208  F.  R, 
383,  1913;  Ford  Motor  Co.  v. 
International  Automobile  League, 
209  F.  R.  235,  1913;  Rajah  Auto 
Supply  Co.  v.  Rex  Ignition  Mfg. 
Co.,  209  F.  R.  622,  1913;  United 
States  v.  Kellogg  Toasted  Corn- 


flake Co.,  222  F.  R.  725,  1915; 
Ford  Motor  Co.  v.  Union.  Motor 
Sales  Co.,  225  F.  R.  373,  1915; 
American  Graphophone  Co.  v. 
Boston  Store,  225  F.  R.  785,  1915 
(in  which  case  a  price  restriction 
was  upheld  on  the  ground  I  hat 
there  was  a  specific  agreement  so 
requiring,  between  the  patentee 
and  the  manufacturer);  Eliot, 
Machine  Co.  v.  Center,  227  F.  R . 
124,  1915;  Sheridan-Clayton 
Paper  Co.  v.  U.  S.  Envelope  ( !o., 
232  F.  R.  153,  1916. 


CHAPTER  XIII 

INTERFERING    PATENTS 

315.  Characteristics  and  causes  of      318.  The   evidence    in   such    ;«•- 

interfering  patents.  tions. 

316.  Actions   in   equity   between      319.  Injunctions  in  such  actions. 

interfering  patents.  320.  The  proper  decrees  in  such 

317.  The  questions  and  issues  in  actions. 

such  actions. 

§  315.  Patents  which  contain  one  or  more  claims  in 
common,  are  interfering  patents.1  But  a  generic  claim, 
and  a  specific  claim,  the  first  of  which  secures  a  particular 
process  or  mechanism,  with  its  indispensable  character- 
istics, with  or  without  its  minor  features,  and  the  last  of 
which  secures  the  same  process  or  mechanism,  with  but 
not  without  its  minor  features,  are  not  co-extensive 
claims,  and  therefore  do  not  interfere  with  each  other.2 
All  but  one  of  several  interfering  patents  are  necessarily 
void,  as  to  the  interfering  claim  or  claims;  though  all  may 
be  valid  as  to  the  other  claims  which  they  respectively 
contain.3 

There  are  two  causes  which  lead  to  the  granting  of  in- 
terfering claims.  Such  claims  may  be  granted  because 
of  inadvertence  or  erroneous  judgment  on  the  part  of  the 
Patent  Office;  and  they  may  be  granted  because  applica- 
tions do  not  always  happen  to  be  made  in  the  order  of  in- 

1  Nathan  Mfg.  Co.  v.  Craig,  49  Brown  Mach.  Co.,  57  F.  R.  605, 
F.  R.  370,  1892;  Dederick  v.  Fox,      1893. 

56  F.  R.  717,  1893;  Simplex  Rail-  3  Gold  and  Silver  Ore  Co.   v. 

way  Appliance  Co.  v.  Wands,  115  Disintegrating  Ore  Co.,  6  Blatch. 

F.  R.  520,  1902.  311,  1869. 

2  Stonemetz     Mach.     Co.     v. 

398 


CHAP.   XIII.]  INTERFERING    PATENTS  399 

ventions.  The  first  cause  may  operate  when  the  Patent 
Office  examiners  overlook  an  anticipating  patent,  while 
examining  an  application  in  point  of  novelty;  or  when 
they  form  an  erroneous  opinion  that  an  existing  patented 
claim  is  substantially  different  from  the  claim  under 
immediate  inspection.  The  second  cause  may  operate 
when  one  person  who  is  not  the  first  inventor  of  a  particu- 
lar thing,  applies  for  and  receives  a  patent  thereon,  be- 
fore another  person,  who  is  the  first  inventor  of  that  thing, 
files  his  application  in  the  Patent  Office.  Under  such 
circumstances,  it  is  the  duty  of  the  Commissioner  to  de- 
clare an  interference  between  the  patent,  and  the  unpat- 
ented application,  and  if,  in  that  interference  proceeding, 
the  later  applicant  is  adjudged  to  be  the  prior  inventor, 
and  if  the  application  is  otherwise  unobjectionable,  it 
becomes  the  duty  of  the  Commissioner  to  grant  him  a 
patent.4  The  Commissioner  has,  however,  no  authority 
to  recall  the  patent  theretofore  granted  to  the  wrong 
party.    That  patent  can  be  repealed  by  the  courts  alone. 

§  316.  An  action  in  equity  is  the  prescribed  proceeding 
by  means  of  which  the  interfering  claims  of  two  or  more 
issued  patents  may  be  adjudicated,  in  point  of  relative 
priority. 5  Such  an  action  may  be  j  oined  with  an  action  for 
infringement,6  where  the  complainant's  patent  was  issued 
first.  But  where  the  defendant's  patent  was  issued  first, 
an  action  for  infringement  of  the  complainant's  patent  by 
the  defendant,  cannot  be  joined  with  such  an  interference 
action.7 

In  previous  editions  of  this  book  it  has  been  stated  that 

4  Revised  Statutes,  Section  262,  1883;  Swift  v.  Jenks,  29  F.  R. 
4904;  Hubel  v.  Dick,  28  F.  R.  139,  642,  1887;  Holliday  v.  Pickhardt, 
1886.  29  F.  R.  853,  1887. 

5  Revised  Statutes,  Section  4915.  'American    Roll-Paper   Co.   v. 
•  Leach  v.  Chandler,  18  F.  R.      Knopp,  44  F.  R.  611,  1891. 


100  interfering;  patents  [chap.  xiii. 

where  such  a  suit  in  equity  is  brought  without  joining  an 
.id ion  for  infringement  therewith,  a  cross-bill,  based  on 
alleged  infringement  by  the  complainant  of  the  defend- 
ant's patent,  is  not  proper,8  and  that  a  cross-bill  is  im- 
proper, which  seeks  to  institute  an  interference  action, 
in  response  to  an  action  for  infringement  alone.9 

These  decisions  cited  on  these  points  probably  still  hold 
good  in  spite  of  the  second  paragraph  of  Equity  Rule 
30  promulgated  November  4,  1912,  wherein  it  is  provided 
that  the  answer  may,  without  cross-bill,  set  out  any  set- 
off or  counterclaim  which  might  be  the  subject  of  an  in- 
dependent suit  in  equity  against  the  plaintiff.9" 

The  complainant  in  an  interference  suit  may  be  the 
patentee  or  assignee  of  either  of  the  interfering  patents,  or 
a  grantee  or  licensee  thereunder;  for  all  these  persons  fall 
within  the  category  mentioned  in  the  statute;  a  category 
which  includes  every  person  interested  in  any  one  of  the 
patents,  or  in  the  working  of  the  invention  claimed  under 
any  of  them.  The  defendant  may  be  any  patentee,  as- 
signee, grantee  or  licensee  who  is  interested  in  another 
of  the  interfering  patents.  And  if  the  interfering  patents 
were  originally  applied  for  by  a  single  inventor  and  as- 
signed to  different  parties,  the  latter  may  be  plaintiffs 
and  defendants  in  such  a  suit.10  It  is  neither  necessary 
that  all  the  possible  complainants  should  join  in  a  suit, 
nor  that  all  the  possible  defendants  should  be  brought 
before  the  court.  The  statute  provides  that  no  decree 
entered  in  such  a  suit,  shall  affect  either  patent,  except 
so  far  as  the  patent  affected  is  owned  by  parties  to  the 
suit,  or  by  persons  deriving  title  under  them  after  the  ren- 

8  Stonemetz  Mach.Co.  v.  Brown         9<I  See  Section  591. 

Mach.  Co.,  46  F.  R.  851,  1891.  "Keystone    Trading    Co.     v. 

9  New  Departure  Bell  Co.  v.  Zapota  Mfg.  Co.,  210  U.  S.  456, 
Hardware  Co.,  62  F.  R.  462,  1894.      1913. 


CHAP.    XIII.]  INTERFERING    PATENTS  -401 

dition  of  such  decree.  The  proper  practice  is  to  make  all 
persons  complainants  who  have  a  right,  and  who  are 
willing,  to  be  so  made;  and  to  make  all  persons  defend- 
ants who  are  liable  to  be  made  so,  and  who  are  inhabi- 
tants of  the  district  where  the  suit  is  brought,  or  who  shall 
be  found  in  that  district.11 

A  bill  cannot  be  filed  in  an  interference  suit  until  the 
complainant's  patent  is  actually  granted,12  and  until  the 
defendant's  patent  is  actually  granted  there  is  no  occasion 
for  such  a  bill.  No  cross-bill  or  counterclaim  is  either 
necessary  or  proper  in  a  suit  of  this  kind,  because  the 
statute  provides  that  in  such  a  suit  the  court  may  adjudge 
either  of  the  patents  to  be  void,  which  provision  is  held 
to  refer  to  any  grounds  of  invalidity  which  may  be  found 
to  exist.13  The  defendant  may  therefore  obtain  all  right- 
ful affirmative  relief  without  becoming  himself  a  com- 
plainant in  a  cross-bill,14  or  setting  out  a  counterclaim. 
And  the  defendant's  right  to  such  relief  prevents  the 
complainant  from  dismissing  his  bill  without  the  de- 
fendant's consent.15  Since,  by  the  terms  of  the  statute, 
the  judgment  binds  only  the  parties  to  the  suit  and  those 
deriving  title  from  them  subsequent  to  the  rendition  of 
the  judgment,  it  is  proper  for  the  court  to  enjoin  the  de- 
fendant from  transferring  his  patent  pending  the  outcome 
of  the  suit.16 

§  317.  The  questions  which  may  arise  in  an  interfer- 
ence suit  are  the  following:  1.  The  presence  or  absence 

11  18  Statutes  at  Large,  Part  3,  14  Lockwood  v.  Cleveland,  0 
Ch.  137,  Section  1,  p.  470;  In  re      F.  R.  721,  1884. 

Hohorst,  150  U.  S.  661,  1893.  16  Electrical  Accumulator  Co.  v. 

12  Hoeltge  v.  Hoeller,  2  Bond,  Brush  Electric  Co.,  44  F.  R.  606, 
338,  1870.  1890. 

13  Nikola  Tesla  Co.  v.  Marconi  16  Keystone  Trading  Co.  /•. 
Wireless  Telegraph  Co.,  227  F.  R.  Zapota  Mfg.  Co.,  210  F.  R.  456, 
903,  1915.  1913. 


U)2  INTERFERING    PATENTS  [CHAP.    XIII. 

of  an  interference  between  the  patents.17  2.  The  ques- 
tion whether  the  Bubjecl  of  the  interference  was  patent- 
able at  all  or  whether  either  of  the  patents  is  void  on  any 
ground.18  3.  The  question  whether  the  first  party  to 
conceive  the  invention  involved  in  the  suit,  was  also  the; 
first  to  reduce  it  to  practice,  or  to  file  an  application  for  a 
patent  thereon,  as  the  case  may  be.  4.  The  question 
whether  the  first  party  to  conceive  the  invention,  if  he 
neither  reduced  it  to  practice  nor  applied  for  a  patent 
thereon,  till  after  another  party  to  the  suit  did  one  or  the 
other  of  those  things,  was  negligent  of  the  invention, 
before  that  other  party  conceived  the  invention  himself. 

The  first  and  second  of  these  questions  may  depend  on 
the  construction  of  the  patent;  and  that  construction  may 
depend  on  evidence  of  the  prior  art.  Where  that  construc- 
tion can  be  based  on  the  words  of  the  patents,  with  or 
without  taking  judicial  notice  of  facts  not  stated  therein, 
the  first  and  second  questions  may  be  decided  on  de- 
murrer,19 but  not  otherwise.20  The  interfering  claims 
of  the  two  patents  must  be  substantially  identical,  else 
there  is  no  jurisdiction  under  Section  4918.  The  identity 
of  the  claims  is  the  sole  test  of  the  question  of  the  existence 
of  an  interference.21  The  second  question  involves  lack 
of  invention,  want  of  novelty  and  any  other  defence  which 
may  constitute  a  defence  to  an  ordinary  patent  suit.22 

17  Revised  Statutes,  Section  19  Morris  v.  Mfg.  Co.,  20  F.  R. 
4918.  121,  1884. 

18  Palmer  Pneumatic  Tire  Co.  v.  20  Simplex  Railway  Appliance 
Lozier,  90  F.  R.  732, 1898;  General  Co.  v.  Wands,  115  F.  R.  517,  1902. 
Chemical  Co.  v.  Blackmore,  156  21  Boston  Pneumatic  Power  Co. 
F.  R.  968,  1907;  Dittgen  v.  Racine  v.  Eureka  Patents  Co.,  139  F.  R. 
Paper  Goods  Co.,  181  F.  R.  394,  29,  1905. 

1910;  Nikola  Tesla  Co.  8.  Marconi  -  Nikola  Tesla  Co.  v.  Marconi 

Wireless  Telegraph  Co.,  227  F.  R.  Wireless  Telegraph  Co.,  227  F.  R. 
903,  1915.  903,  1915. 


CHAP.    XIII. |  [NTERFERING    PATENTS  403 

The  third  and  fourth  of  the  questions  defined  in  the 
first  paragraph  of  this  section  are  properly  investigated 
and  decided  by  means  of  the  rules  which  are  stated  and 
explained  under  the  head  of  interferences,  in  that  chap- 
ter of  this  book  which  is  devoted  to  applications  for 
patents.23  Those  two  questions  relate  to  the  same  issue 
of  fact.  If  the  complainant's  invention  is  the  older,  the 
defendant's  interfering  claim  is  void  for  want  of  novelty.-1 
And  the  complainant's  interfering  claim  is  void  for  want 
of  novelty,  if  the  defendant's  invention  is  found  to  an- 
tedate the  other.25 

§  318.  The  evidence  upon  which  interference  suits  are 
decided,  may  consist  of  documents  and  exhibits,  proved 
and  supplemented  by  depositions  of  witnesses.  Such 
depositions  may  be  taken  in  the  same  ways  in  which 
depositions  may  be  taken  in  infringement  cases.26  And 
any  deposition  which  was  taken  in  an  interference  in  the 
Patent  Office,  between  the  same  inventions,  is  admissible, 
or  not  admissible  as  the  case  may  be,  in  an  interference 
suit,  according  to  those  rules  of  the  law  of  evidence,  which 
relate  to  the  use  in  one  case,  of  depositions  which  were 
taken  in  another.27 

A  properly  authenticated  copy  of  the  decision  of  the 
Commissioner  of  Patents  in  such  an  interference,  or  of 
the  Court  of  Appeals  of  the  District  of  Columbia  review- 
ing such  a  decision  of  the  Commissioner,  is  admissible  in 
evidence  in  an  interference  suit  between  patents  on  in- 
ventions which  were  involved  in  such  an  interference. 

23  Sections  140-141c  of  this  Lamson  Store-Service  Co.,  60 
book.  F.  R.  603,  1894. 

24  Pacific    Cable    Ry.    Co.    v.  2B  Section  639  of  this  book. 
Butte  City  Ry.  Co.,  52  F.  R.  865,  27  Section    640    of    this    book; 
1892.  (low   v.  Baker,    36  F.   R.   692, 

28  National  Cash  Register  Co.  v.       1888. 


III!  ENTERFERING    PATENTS  [CHAP.    XIII. 

If  not  reversed  by  thai  court;  the  decision  of  t lie  Com- 
missioner is  prima  facie  evidence  in  favor  of  the  patent 
last  granted,  because  he  would  not  have  granted  it  if  he 
had  not  decided  it  to  be  entitled  to  priority  in  point  of 
date  of  invention.28  And  any  decision  of  that  court,  is 
also  prima  facie  evidence  in  favor  of  the  patent  last 
granted,  for  that  patent  would  never  have  existed,  if  that 
court  had  decided  the  interference  against  the  applicant 
therefor. 

§  319.  Injunctions  are  not  expressly  authorized  by  that 
section  of  the  statute,  which  provides  for  interference 
suits.  But  Justice  Nelson  decided  in  1863,  that  a  pre- 
liminary injunction  can  be  granted  in  such  a  case,  on  the 
ground  that  "the  power  conferred  upon  the  Circuit  Court 
to  entertain  bills  in  equity,  in  controversies  arising  under 
the  patent  act,  is  a  general  equity  power,  and  carries  with 
it  all  the  incidents  belonging  to  that  species  of  jurisdic- 
tion." 29  And  that  decision  has  been  reaffirmed  and  re- 
peated in  recent  times.30 

§  320.  The  hearing  of  an  interference  case  may  disclose 
that  there  is  no  interference  between  the  patents  before 
the  court;  or  that  there  is  such  an  interference.  In  the 
former  event,  the  proper  decree  to  enter  is  one  dismissing 
the  complainant's  bill;  and  in  the  latter  event,  the  proper 
decree  is  one  adjudging  the  patent  issued  on  the  later  of 
the  inventions  to  be  void,  so  far  as  it  covers  the  interfer- 
ing matter,  and  so  far  as  the  title  of  the  parties  to  the  suit 
extends.31  Such  a  decree  should  be  entered  regardless  of 
whether  the  patent  to  be  voided  is  that  of  the  defendant 

28  Pacific    Cable    Ry.    Co.    v.  30  Palmer  Pneumatic  Tire  Co.  v. 
Butte  City  Ry.  Co.,  52  F.  R.  865,  Lozier,  69  F.  R.  348,  1895. 
1892.  "Gilmore  v.  Golay,  3  Fisher, 

29  Potter  v.  Dixon,  5  Blatch.  165,  522,  1869;  Sturges  v.  Van  Hagan, 
1863.  6  Fisher,  572,  1873. 


CHAP.    XIII.]  INTERFERING  PATENTS  405 

or  that  of  the  complainant.  If  it  is  the  latter,  a  decree 
merely  dismissing  the  complainant's  bill  will  not  answer 
the  purpose;  because  such  a  decree  does  not  necessarily 
involve  such  a  conclusion.32  It  may  mean  only  that  there 
is  no  interference;  or  it  may  merely  mean  that  the  com- 
plainant has  no  proper  title  to  the  patent  which  he  invokes. 

32  Tyler  v.  Hyde,  2  Blatch.  310,  1851. 


CHAPTER  XTV 

REPEAL    OF    PATENTS 

321.  Patents  obtained  by  fraud,  peal  patents  so  obtained  or 

or  granted  by  mistake  so  granted. 

322.  Jurisdiction  of  equity  to  re-      323.  Practice  in  such  cases. 

§  321.  Patents  and  reissues  may  sometimes  be  ob- 
tained by  fraud;  and  sometimes  be  granted  by  mistake. 
The  facts  which  constitute  the  fraud,  or  which  make  the 
granting  a  mistaken  one,  may  generally  be  interposed  as 
one  of  the  defences  to  an  infringement  suit;  but  where 
those  facts  are  such  that  no  one  of  those  defences  can  be 
based  upon  them,  they  cannot  be  interposed  merely  be- 
cause they  constitute  a  fraud,1  or  constitute  a  mistake.2 
Nor  can  any  individual  bring  any  action  to  repeal  or 
otherwise  set  aside  a  patent,  on  any  ground  of  fraud;  or 
indeed  on  any  ground  whatever,  except  that  of  an  inter- 
ference.3 Where  frauds  are  ingenious  enough  to  keep 
clear  of  all  known  defences  to  infringement  suits,  the 
wrongs  which  they  cause  are  without  a  remedy,  unless  the 
United  States  courts  will  repeal  a  patent  which  United 
States  officers  have  fraudulently  been  induced  to  grant, 
or  to  reissue.  For  when  a  patent  has  been  signed  and 
sealed  in  the  Patent  Office,  it  cannot  be  revoked  or  can- 
celed by  the  President  of  the  United  States,  or  any  other 

1  Railroad  Co.  v.  Dubois,  12  433,  1869;  Calculagraph  Co.  v. 
Wallace,  64,  1870;  Western  Glass      Wilson,  132  F.  R.  20,  1904. 

Co.  v.  Schmerz  Wire-Glass  Co.,          3  Mowry  v.  Whitney,  14  Wal- 
185  F.  R.  788,  1911.  lace,  439,  1871. 

2  Doughty  v.  West,  6  Blatch. 

406 


THAI'.    XIV.]  REPEAL   OF   PATENTS  407 

officer  of  the  Government.4  For  the  .same  reason,  where  a 
patent  is  granted  by  mistake,  instead  of  being  refused,  as 
it  ought ;  and  where  the  ground  of  refusal  does  not  consti- 
tute ground  of  defence  to  a  suit  for  infringement;  the 
wrongs  which  such  a  mistake  will  occasion  must  be  rem- 
edied by  a  repeal  of  the  patent,  or  they  are  remediless. 

§  322.  Equity  has  jurisdiction  to  repeal  letters  patent 
for  inventions  where  they  were  obtained  by  fraud,  when- 
ever the  United  States  files  a  bill  of  complaint,  stating 
the  facts  and  praying  that  the  letters  patent  may  be 
annulled.5  And  the  same  jurisdiction  exists,  where  such 
letters  patent  are  issued  by  any  such  mistake  as  those  for 
which  courts  of  equity  grant  relief,  except  so  far  as  the 
peculiar  provisions  of  the  patent  statutes  may  limit  the 
general  rule;  but  this  jurisdiction  to  repeal  letters  patent, 
which  may  be  claimed  to  have  been  issued  by  mistake, 
does  not  extend  to  error  of  judgment  in  deciding  any  de- 
batable question  of  difference  of  invention.6 

§  323.  A  bill  to  repeal  a  patent  must  be  filed  before  the 
expiration  of  the  patent,7  and  in  some  District  Court  of 
the  United  States,8  which  has  jurisdiction  of  the  owner 
of  the  patent  sought  to  be  repealed.  The  District  Court 
for  the  district  in  which  that  owner  is  an  inhabitant,  is 
such  a  court;  as  also  probably  is  the  District  Court  for 
any  district  wherein  that  owner  can  be  found.9  In  be- 
ginning and  prosecuting  an  action  in  equity  to  repeal  a 
patent,  the  United  States  acts  through  the  United  States 
District  Attorney  of  the  district  in  which  the  action  is 

4  McCormick  Mach,  Co.  v.  7  Bourne  v.  Goodyear,  9  Wal- 
Aultman,  169  U.  S.  608,  1898.  lace,  811,  1869. 

5  United  States  v.  Bell  Tel-  8  Revised  Statutes,  Section  629, 
ephone    Co.,    128    U.    S.    373,  paragraph  9. 

1888.  9 18  Statutes  at  Large,  Part  3, 

8  United  States  v.  Bell  Tel-  Ch.  137,  Section  1,  p.  470;  In  re 
ephone  Co.,  167  U.  S.  264,  1897.        Hohorst,  150  U.  S.  661,  1893. 


IOS  REPEAL   OF    PATENTS  [CH  V.P.    \i\  . 

brought ;  '"  and  he  ads  under  the  direction  of  the  Attorney 
General  of  the  United  States;  "  who  may  be  prompted 
by  the  Commissioner  of  Patents; '-'  or  by  any  private  per- 
son. But  no  citizen  lias  any  power  to  compel  the  Attorney 
General,  or  the  District  Attorney,  to  begin  such  a  suit, 
or  to  control  its  prosecution  after  it  is  begun.13  The 
pendency  of  a  bill  to  repeal  a  patent,  will  not  affect  the 
progress  of  an  infringement  suit  based  on  that  patent;14 
and  no  injunction  will  issue  to  restrain  a  patentee  from 
bringing  infringement  suits,  pending  a  bill  in  equity  to 
repeal  the  patent  upon  which  he  proposes  to  bring  them." " 

ln  Attorney  General  v.  Rumford  fee  Polishing  Co.  v.  New  York 

Chemical  Works,  2  Bann.  &  Ard.  Coffee  Polishing  Co.,  9  F.  R.  580, 

308,  1876.  1881. 

"United    States   v.    Bell   Tel-  l*  American  Bell  Telephone  Co. 

ephone  Co.,  128  U.  S.  350,  1888.  v.    National   Telephone   Co.,    27 

12  McCormick    Mach.    Co.    v.  F.  R.  666,  1886. 

Aultman,  169  U.  S.  612,  1898.  15  United  States  v.  Colgate,  21 

13  New  York  &  Baltimore  Cof-      F.  R.  318,  1884. 


CHAPTER  XV 

QUI   TAM   ACTIONS 

324.  Qui  tarn  actions,  defined  and      329.  The  amount  of  the  recover- 

described  as  they  exist  in  able  penalty. 

the  patent  laws.  330.  The  parties  in  qui  tarn  patent 

325.  The  wrongs  which  are  the  cases. 

foundations    of    such    ac-      331.  The  forum  for  qui  tarn  patent 
tions.  actions. 

326.  The  first  two  of  those  three      332.  The  form  of  the  suit,  and  the 

classes  of  wrongs.  requisites  of  a  declaration, 

327.  The    third    of    those    three  in  such  an  action. 

classes  of  wrongs.  333.  Injunctions  to  restrain  the 

328.  Wrongs  of  either  class  are  commission  of  wrongs  of 

completed   when   the   ar-  either    of    the    first    two 

tides  are  illegally  marked,  classes, 

without    any    subsequent  334.  Appeals  in  qui  tarn  patent 

using  or  selling.  cases. 

§  324.  These  are  certain  actions  at  law,  which  derive 
their  name  from  the  Latin  words  qui  tarn,  used  at  the 
beginning  of  the  declaration  in  such  an  action,  in  times 
when  all  declarations  were  written  in  the  Latin  language. 
No  such  action  was  known  to  the  common  law  of  England ; 
but  several  actions  of  the  kind  have  long  been  prescribed 
by  statute,  in  that  country,  and  in  this.  Qui  tarn  actions 
relevant  to  patents  are  authorized  by  Section  4901  of  the 
Revised  Statutes.  That  statute  forbids  certain  classes 
of  acts;  and  provides  that  whoever  commits  an  act  of 
either  of  those  classes,  shall  be  liable  to  a  penalty  of  not 
less  than  one  hundred  dollars,  with  costs;  and  that  any 
person  may  sue  for  that  penalty,  in  any  District  Court 
of  the  United  States  within  whose  jurisdiction  the  offence 

409 


1  II)  QUI    TAM     ACTIONS  [CHAP.    XV. 

was  committed;  and  thai  one-half  of  the  penalty,  when 

recovered,  shall  go  to  the  plaintiff,  and  the  other  half  to 
the  United  States. 

§  325.  The  forbidden  acts  are:  1.  Unauthorized  mark- 
ing, upon  any  patented  article,  of  the  name,  or  any  imita- 
tion of  the  name,  of  the  patentee.  2.  Unauthorized  mark- 
ing, upon  any  patented  article,  of  the  word  "patent" 
or  "patentee,"  or  the  words  "letters  patent,"  or  any 
word  of  like  import,  with  intent  to  imitate  or  counterfeit 
the  mark  or  device  of  the  patentee.  3.  Marking  upon  any 
unpatented  article  the  word  "patent,"  or  any  word  im- 
porting that  the  same  is  patented,  for  the  purpose  of  de- 
ceiving the  public. 

§  326.  The  first  two  of  these  three  classes  of  acts  are 
injurious  to  the  public,  and  to  the  patentees.  They  are 
injurious  to  the  public  in  that  they  are  adapted  to  mislead 
persons  into  buying  and  using  articles  which  were  made 
and  sold  in  violation  of  patents,  and  which  therefore  can- 
not be  lawfully  used  even  by  innocent  purchasers.  The 
law  provides  that  those  who  have  a  right  to  make  and  sell 
patented  articles  shall  mark  those  articles  with  the  word 
"patented";1  and  that  other  persons  shall  not  so  mark 
such  articles.2  When  buying  anything  which  is  not  so 
marked,  a  purchaser  properly  concludes  that  it  is  not 
patented,  and  that  he  may  therefore  use  it  without  risk 
of  a  suit  for  infringement ;  and  when  buying  anything  that 
is  so  marked,  the  purchaser  concludes,  with  equal  pro- 
priety, that  it  was  made  and  sold  by  the  patentee  or  some 
one  lawfully  authorized  by  him,  and  that  therefore  it 
may  be  lawfully  used  to  any  extent  desired.  It  is  clear, 
that  on  these  accounts,  the  first  two  of  the  forbidden  acts 
are  detrimental  to  public  security,  and  therefore  opposed 

1  Revised  Statutes,  Section  2  Revised  Statutes,  Section 
4900.  4901. 


Chap,  xv.]  qui  tam  actions  411 

to  public  policy.  The  same  acts  are  also  injurious  to  pat- 
entees, and  they  will  be  considered  in  that  aspect  in  a  sub- 
sequent section.  But  the  second  of  the  forbidden  acts 
is  not  committed  by  marking  the  word  " patented"  upon 
a  case  containing  patented  articles  of  such  a  character 
that  they  could  themselves  have  been  thus  marked.3 

§  327.  The  last  of  the  three  forbidden  classes  of  acts  is 
injurious  to  the  public,  in  that  it  is  adapted  to  mislead  per- 
sons into  an  opinion  that  they  have  no  right  to  make  and 
use,  or  make  and  sell,  other  specimens  of  the  thing  marked 
as  being  patented.  When  an  unpatented  thing  is  so 
marked,  it  is  immaterial  whether  it  is  a  patentable  thing 
or  not.4  Whether  a  thing  is  patentable  or  not  depends 
on  considerations  of  which  the  public  as  a  whole  are  neces- 
sarily ignorant.  They  may  therefore  be  deceived  by  see- 
ing the  word  "patented  "  upon  an  unpatentable  unpatented 
article,  as  readily  as  by  seeing  the  same  word  upon  a  pat- 
entable unpatented  article.  That  word  warns  them  not 
to  copy  that  article.  They  are  as  reluctant  to  disregard 
that  warning  on  a  supposition  that  the  article  is  not  pat- 
entable, as  they  are  on  the  hypothesis  that  it  is  not  pat- 
ented ;  and  they  are  as  effectually  diverted  from  exercising 
their  right  to  copy  it  in  the  one  case  as  in  the- other. 

Intent  to  deceive  the  public  is  a  necessary  element  of 
the  forbidden  act  now  under  consideration ;  and  that  intent 
must  exist  at  the  time  of  the  marking; 5  and  it  does  not 
exist  when  the  person  marking,  is  himself  mistaken  relevant 
to  his  right  so  to  mark;6  or  where  the  word  " patented" 

3  Smith  v.  Walton,  51  F.  R.  17,  Co.,  53  F.  R.  1018,  1891;  Loudon 
1892;  56  F.  R.  499,  1893.  v.  Everett  H.  Dunbar  Corpora- 

4  Oliphant   v.    Salem   Flouring      tion,  179  F.  R.  506,  1910. 

Mills  Co.,  5  Sawyer,   128,  1878;  "Walker      v.      Hawxhurst,      5 

Winne  v.  Snow,  19  F.  R.  509, 1844.      Blatch.  494,  1867;  Russell  v.  New- 

■>  Hotchkise    «    Woodei?    Wa«>      ar,v  Macb.  Co.-  55  F.  R.  300,  1893. 


Il_!  QUI    TWl    ACTIONS  [CHAP.    XV. 

is  accompanied  by  other  words  or  characters  which  indi- 
cate that  the  article  was  once  the  subject  of  a  patent,  but 
that  the  patent  has  expired  at  (lie  time  of  the  marking.7 
Inasmuch  as  all  persons  are  presumed  to  intend  the 
natural  consequences  of  their  acts,  proof  of  an  act  which 
was  adapted  to  deceive  the  public,  is  sufficient  proof  of  the 
intent  to  deceive,  unless  the  doer  establishes  his  innocence 
of  that  intent.  The  burden  of  proof  therefore  lies  upon 
the  defendant,  in  this  particular.8  That  burden  can  be  car- 
ried by  showing  that  the  person  marking,  honestly  believed 
that  the  thing  marked  was  really  patented  by  a  particular 
patent;  but  it  cannot  be  carried  by  showing  that  the  person 
marking  did  not  know  whether  the  article  marked  was 
patented  or  not;  and  the  question  whether  a  particular 
thing  marked  "patented"  is  really  patented  by  a  particu- 
lar patent,  is  a  question  of  construction  for  the  court.9 
Where  the  defendant  is  a  corporation,  the  intent  to  de- 
ceive the  public  may  be  that  of  an  officer  or  agent,  who 
acted  within  the  scope  of  his  authority,  in  causing  the 
marked  article  to  be  made  and  prepared  for  sale.10  The 
forbidden  act  treated  in  this  section,  is  not  committed  by 
marking  upon  a  patented  article  the  number  and  date  of 
a  patent  which  does  not  cover  it,  where  it  is  also  marked 
with  the  number  and  date  of  a  patent  which  does  cover  it. '  * 
§328.  Proof  that  the  article  illegally  marked  "pat- 
ented" was  afterward  sold,  or  was  otherwise  presented 
to  the  notice  of  the  public,  is  not  a  necessary  element  in 
either  of  the  acts  which  are  forbidden  by  the  statute;  but 
proof  that  the  intent  to  deceive  the  public  existed  when 

7  Wilson  v.  Mfg.  Co.,  12  F.  R,  10  Tompkins  v.  Butterfield,  25 
57,  1882.  F.    R,   559,    1885;   Hotchkiss   v. 

8  Brig  Struggle  v.  United  States,  Wooden  Ware  Co.,  53  F.  R.  1018, 
9  Cranch,  74,  1815.  1891. 

9 Tompkins  v.   Butterfield,   25  "Russell  v.  Newark  Machine 

F.  R,  556,  1885.  Co.,  55  F.  R,  300,  1893. 


CHAP.    XV. J  QUI    TAM    ACTIONS  413 

the  marking  was  done  is  such  an  element.  Accordingly, 
if  a  person  illegally  marks  an  article,  his  offence  is  com- 
plete, and  is  not  condoned  by  a  subsequent  omission  to 
profit  by  that  offence;  but  where  a  person  marks  an  article 
without  any  intent  to  deceive,  and  afterward  uses  the 
article  so  marked  for  purposes  of  deception,  he  does  not 
violate  the  statute.12  Where  a  person  illegally  marks  an 
article  in  one  judicial  district  of  the  United  States,  and 
offers  it  for  sale  in  another,  he  violates  the  statute  in  the 
former  district  but  not  in  the  latter.13 

§  329.  The  penalty  prescribed  by  the  statute  for  either  of 
the  forbidden  acts  is  "not  less  than  one  hundred  dollars"; 
and  that  language  must,  in  a  penal  statute  like  this,  be 
strictly  construed,  and  when  so  construed,  it  authorizes 
a  penalty  of  precisely  one  hundred  dollars  and  no  more.14 
Judge  Thayer  once  instructed  a  jury  that  where  several 
unpatented  articles  are  marked  "patented"  on  the  same 
day,  and  at  the  same  time,  so  that  the  act  of  marking  is 
practically  continuous,  but  one  offence  is  committed  under 
the  statute,  and  only  a  single  penalty  is  recoverable  for  all 
the  articles  thus  marked.15 

§  330.  The  plaintiff  in  a  qui  tarn  action  for  illegally 
marking  a  patented  or  unpatented  article  may  be  any 
"person,"  16  whether  he  was  injured  by  the  doings  of  the 
defendant  or  not. 17  It  was  decided  under  a  similar  statute 
relevant  to  copyrights,  that  a  plurality  of  persons  could 
not  join  as  plaintiffs  in  an  action  of  the  kind.ls    The  lan- 

12  Nichols  v.  Newall,  1  Fisher,  v.  Everett  H.  Dunbar  Corpora- 
647,  1853.  tion,  179  F.  R.  506,  1910. 

13  Pentlarge  v.  Kirby,  19  F.  R.  16  Revised  Statutes,  Section 
504,  1884.  4901. 

14  Stimpson  v.  Pond,  2  Curtis,  17  Winne  v.  Snow,  19  F.  R.  508, 
502,  1855.  1884. 

15  Hotchkiss  v.  Wooden  Ware  18  Ferrett  v.  A  twill,  1  Blatch. 
Co.,  53  F.  R.  1021,  1891;  Loudon  153,  1846. 


Ill  QUI   TAM    ACTIONS  [CHAP.    XV. 

guage  <>f  that  copyrighl  statute  was  identical  with  that  of 
the  present  patent  stat  ute  in  this  particular;  and  t lie  same 
reasoning  which  carried  the  courl  to  its  conclusion  in  the 
copyright  case,  will  probably  carry  any  court  to  the  same 
conclusion  in  any  qui  tarn  action  under  the  patent  statute. 
The  person  who  sues  must  be  a  natural  and  not  an  artificial 
person;  and  he  must  sue  in  his  own  name  and  not  in  that 
of  the  United  States,19  though  it  is  not  improper  for  him 
to  state  that  he  sues  for  the  United  States,  as  well  as  for 
himself.20 

The  defendant  may  be  the  particular  natural  person 
who  did  the  marking  complained  of,  or  the  particular  cor- 
poration wThich  caused  it  to  be  done,  or  which  otherwise 
became  responsible  therefor.21  The  death  of  the  defend- 
ant, if  a  natural  person,  will  end  a  qui  tarn  patent  case, 
and  will  terminate  the  right  of  action  on  which  it  is  based.22 

§  331.  Jurisdiction  in  qui  tam  actions,  unlike  that  in 
other  kinds  of  patent  suits,  has  always  been  conferred, 
solely  upon  District  Courts,  and  has  never  been  con- 
ferred upon  Circuit  Courts  of  the  United  States,  and  is 
conferred  for  each  case,  upon  the  particular  District  Court 
within  the  district  of  which  the  forbidden  act  was  com- 
mitted.23 

§  332.  The  proper  form  of  common-law  action  in  qui 
tam  cases  is  that  of  debt.24  Inasmuch,  however,  as  no 
particular  form  is  prescribed  by  the  Federal  statute,  the 

19  United  States  v.  Morris,  2  22  Schreiber  v.  Sharpless,  17 
Bond,  27,  1866.  F.  R.  589,  1883. 

20  Winne  v.  Snow,  19  F.  R.  508,  23  Revised  Statutes,  Section 
1884.  4901;  Winne  v.  Snow,  19  F.  R. 

21  Hotchkiss  v.  Wooden  Ware  509,  1884;  Pentlarge  v.  Kirby,  19 
Co.,  53  F.  R.  1020,  1891;  Loudon  F.  R.  505,  1884. 

v.  Everett  H.  Dunbar  Corpora-  24  Stimpson  v.  Pond,  2  Curtis, 

tion,  179  F.  R.  506,  1910.  505,  1855;  Jacob  v.  United  States, 

1  Brockenbrough,  520,  1821. 


CHAP.  XV.]         QUI  TAM  ACTIONS  415 

code  forms  of  complaints  or  petitions  are  to  be  used  in 
code  States.25  The  declaration,  complaint,  or  petition, 
as  the  case  may  be,  ought  to  state  all  the  elements  of  the 
forbidden  act  upon  which  it  is  based; 26  and  to  charge 
that  the  act  was  contrary  to  the  form  of  the  statute  in 
such  cases  made  and  provided.27  It  is  not  necessary  to 
aver  the  uses  to  wKich  the  penalty,  when  recovered,  is  to 
be  applied.28  A  declaration,  complaint  or  petition  in  a 
qui  tarn  patent  case,  is  tested  in  point  of  sufficiency,  by 
the  rules  applicable  to  civil  actions  in  the  State  in  which 
the  District  Court  is  established,  when  that  sufficiency  is 
drawn  in  question  in  that  court.29  And  each  " marking" 
complained  of,  must  be  separately  stated,  as  a  separate 
cause  of  action,  in  order  to  recover  on  all  the  " markings" 
cumulatively.30 

§  333.  The  first  two  of  the  classes  of  acts  forbidden  by 
Section  4901  of  the  Revised  Statutes  are  not  only  injurious 
to  the  public,  in  the  manner  already  explained,  but  they 
are  also  injurious  to  the  rightful  patentees.  Such  acts 
enable  infringers  to  increase  the  amount  of  their  infringe- 
ments, by  inducing  the  public  to  believe  that  the  articles 
they  sell  were  lawfully  made,  and  may  be  lawfully  sold 
and  used.  So  also,  such  an  act  may  enable  an  infringer  to 
palm  off  on  the  public  an  inferior  article,  the  using  of  which 
will  disappoint  the  purchaser,  and  thus  operate  to  injure 
the  reputation  of  the  genuine  thing.  For  these  reasons, 
it  has  been  held  that  a  person  who  is  guilty  of  an  act  of 

25  Revised    Statutes,    Sections      rick  v.  United  States,  1  Gallison, 
721, 914;  Hoyt  v.  Computing  Scale      273,  1812. 
Co.,  96  F.  R.  251,  1899.  28  Sears  v.  United  States,  1  Gal- 

28  Ferrett  v.  Atwill,   1  Blatch.      lison,  259,  1812. 
155,  1846.  29  Fish  v.  Manning,  31 F.  R.  340, 

27  Sears  v.  United  States,  1  Gal-      1887. 
lison,  259,  1812;  Smith  v.  United  30  Hoyt  v.  Computing  Scale  Co., 

States,  1  Gallison,  264,  1812;  Ken-      96  F.  R.  251,  1899. 


416  <>'  I    I'AM    ACTIONS  [chap.    XV. 

either  of  the  first  two  classes,  may  be  restrained  by  an  in- 
junction from  any  repetition  of  such  an  act.31 

§  334.  A  writ  of  error  lies  to  the  Circuit  Court  of  Ap- 
peals for  the  circuit,  from  the  final  judgment  of  a  District 
Court  in  a  qui  tarn  patent  case;  but  no  such  writ  of  error 
lies  from  a  Circuit  Court  of  Appeals  to  the  Supreme  Court 
of  the  United  States;  though  such  a  case  may  go  to  the 
latter  tribunal  upon  a  certificate  from  the  former,  or  upon 
a  certiorari  from  the  Supreme  Court.32 

31  Washburn  &  Moen  Mfg.  Co.  "Judicial  Code,  Sections  128, 

r.  Haish,  4  Bann.  &  Ard.  571,      238  and  240. 
1879. 


CHAPTER  XVI 


INFRINGEMENT 


335.  Infringement  of  process  pat-      349. 

ents,  illustrated  by  the  350. 
case  of  Tilghman  v.  Proc-  352. 
tor. 

336.  Illustrated   by   the   case   of      353. 

Mowry  v.  Whitney. 

337.  Illustrated   by   the   case   of 

Cochrane  v.  Deener.  354. 

338.  Equivalents  in  processes  and 

additions  thereto.  359. 

339.  Infringement  of  patents  for 

machines     or     manufac- 
tures. 362. 

340.  Comparative  results. 

341.  Comparative  modes  of  op-      363. 

eration. 

342.  Comparative  modes  of  op- 

eration as  illustrated   by      364. 
the  case  of  the  Cawood 
patent. 

343.  As  illustrated  by  the  Driven-      365. 

Well  cases. 

344.  As     illustrated     by     Blan- 

chard's  patent  for  turning  366. 
irregular  forms. 

345.  As  illustrated  by  Hayden's      367. 

Brass-Kettle  machine. 

346.  As  illustrated  by  the  case  of 

Burr  v.  Duryee. 
346a.  As  illustrated  by  The  Elec-      368. 
trie  Signal  case. 

347.  Addition.  368a 

348.  Transposition  of  parts. 


( )i nission. 

Substitution  of  equivalents. 

The  test  of  sameness  of  func- 
tion. 

The  test  of  substantial  same- 
ness of  way  of  perform- 
ance. 

Question  of  the  necessity  of 
age  in  equivalents. 

Primary  and  secondary  in- 
ventions in  respect  of  the 
doctrine  of  equivalents. 

Review  of  the  matters  con- 
sidered in  Section  359. 

Changes  of  form  considered 
in  respect  of  questions  of 
infringement. 

Nature  of  use  considered  in 
respect  of  questions  of 
infringement. 

Subject  of  the  last  section 
illustrated  by  the  case  of 
Ives  v.  Hamilton. 

Illustrated  by  the  case  of 
Morey  v.  Lockwood. 

Illustrated  by  the  case  of  the 
American  Diamond  Rock 
Boring  Co.  v.  The  Sullivan 
Machine  Co. 

Illustrated  by  the  case  of 
Elizabeth  v.  Pavement  Co. 
Evasion  of  the  patent  by 
changes  of  form. 

417 


418  INFRINGEMENT  [CHAP.    XVI. 

369.  Infringement  of  patents  for      373.  Changes    of    proportion    in 

compositions  of  matter.  compositions  of  matter. 

370.  Substitution  of  ingredients.        375.  Infringements  of  patents  f 01 
370a.  Equivalent,  and  non-equiv-  designs. 

alent,  ingredients.  376.  Comparative    utility    as    a 

371.  Substitution  of  ingredients,  criterion  of  infringement. 

as  illustrated  by  the  Giant-      377.  Knowledge  of  a  patent  by  an 
Powder  cases.  infringer,  not  a  necessary 

372.  Disclaimers     of     particular  element    in    its    infringe- 

equivalents.  ment. 

§  335.  A  patent  for  a  process  is  infringed  by  him,  who, 
without  ownership  or  license,  uses  substantially  the  proc- 
ess which  the  patent  claims;  whether  or  not  he  uses  sub- 
stantially the  apparatus  which  the  patent  describes,1  and 
whether  he  uses  the  materials  prescribed  by  the  patent, 
or  uses  equivalents  therefor.2  Infringement  of  a  process 
patent  may  occur  even  where  precise  identity  does  not  exist 
in  respect  of  the  process  claimed  by  the  patent,  and  that 
used  by  the  infringer.2"  In  the  leading  case  first  cited,  the 
apparatus  used  by  the  infringer  was  totally  unlike  that 
described  by  the  patent;  and  the  process  used  by  the  in- 
fringer differed  from  the  patented  process  in  several  par- 
ticulars. The  claim  of  the  patent  was:  "The  manufactur- 
ing of  fat  acids  and  glycerine  from  fatty  bodies  by  the 
action  of  water  at  a  high  temperature  and  pressure." 
The  description  of  the  process  which  was  contained  in  the 
specification  of  the  patent,  stated  that  the  water  should 
be  mixed  with  the  fatty  body  in  the  proportion  of  two 
or  three  parts  of  fat  to  one  of  water;  and  that  the  mixture 
should  be  heated  to  about  612°  Fahrenheit;  and  should 
be  subjected  to  a  pressure  sufficient  to  prevent  the  heat 
from  converting  the  water  into  steam. 

»  Tilghman  v.  Proctor,  102  U.  S.      66   F.  R.   158,    1895.     See  Sec- 
730,  1880.  tion  362. 

2  Schwarzwalder  v.  Filter  Co.,  ^  See  Section  338. 


CHAP.    XVI.]  INFRINGEMENT  410 

The  infringer  mixed  from  four  to  seven  per  cent  of 
lime  with  the  water  and  the  fat;  and  heated  the  mixture 
to  only  about  310°  Fahrenheit;  and  subjected  it  to  a  pres- 
sure correspondingly  lower  than  what  would  have  been  nec- 
essary to  prevent  the  conversion  of  the  water  into  steam, 
if  he  had  used  the  higher  degree  of  heat.  So  also,  he  heated 
his  mixture  by  means  of  superheated  steam  introduced 
into  the  vessel  containing  it,  instead  of  applying  heat  to 
the  outside  of  the  vessel;  and  he  maintained  the  inti- 
macy of  the  mixture  by  continuously  pumping  the  water 
from  the  bottom  to  the  top  of  the  mingled  mass,  instead 
of  continuously  forcing  the  mixture  through  a  coil  of  tubes. 
Notwithstanding  all  these  differences,  the  Supreme  Court 
held  the  defendant's  process  to  substantially  include  that 
of  the  patent,  and  therefore  to  be  an  infringement  of  the 
latter.  This  holding  was  not  inconsistent  with  the  opinion 
that  the  addition  of  the  lime  to  the  mixture,  was  a  useful 
addition  to  the  patented  process,  nor  with  the  possibility 
that  the  defendant's  method  of  maintaining  the  intimacy 
of  the  mixture,  was  superior  to  that  of  the  patent,  nor 
with  the  probability  that  the  heating  by  the  introduction 
of  superheated  steam,  was  more  perfect  than  by  conducting 
the  heat  into  the  mixture  through  the  walls  of  the  inclosing 
vessel,  nor  with  the  fact  that  the  lower  degree  of  heat  and 
of  pressure  used  by  the  defendant  was  more  safe,  and  per- 
haps more  economical,  than  the  higher  degree  of  each, 
which  was  suggested  in  the  patent. 

§  336.  Similar  circumstances  characterized  the  question 
of  infringement  in  the  case  of  Mowry  v.  Whitney.3  The 
patent  in  that  case  covered  a  process,  which  consists  in 
taking  cast  iron  car-wheels  from  their  moulds  as  soon  as 
they  become  solid  enough  to  retain  their  shape;  and  in 
immediately  placing  the  wheels  in  a  furnace  or  chamber, 
3  Mowry  v.  Whitney,  14  Wallace,  620,  1871. 


120  tNFRINGEMENT  [CHAP.    XVT. 

previously  heated  to  aboul  the  temperature  of  the  wheels 
when  taken  from  the  moulds;  and  in  thereupon  reheating 
i  hose  wheels;  and  then  in  causing  them  to  finally  cool  with 
a  great  degree  of  slowness. 

The  infringer's  process  consisted  in  taking  the  wheels 
red  hot  from  the  moulds;  and  in  thereupon  putting  them 
in  an  unheated  chamber,  interlaying  them  with  charcoal, 
and  covering  the  whole  with  a  perforated  metal  plate;  and 
in  then  causing  the  charcoal  to  burn  so  as  to  reheat  the 
wheels  to  a  somewhat  indefinitely  high  temperature;  and 
in  so  adjusting  the  draft,  as  to  make  the  charcoal  burn 
out,  and  the  wheels  to  consequently  cool  down,  with  a 
great  degree  of  slowness.  The  Supreme  Court  found  all 
of  the  steps  of  the  complainant's  process  in  the  defendant's 
doings,  though  confessedly  the  reheating  was  done  by 
different  means,  and  the  slow  cooling  regulated  on  differ- 
ent principles,  from  those  which  caused  and  controlled 
the  corresponding  parts  of  the  complainant's  process. 

§  337.  The  case  of  Cochrane  v.  Deener  4  involved  the 
infringement  of  a  patent  for  a  process  of  winnowing  im- 
purities out  of  ground  wheat,  while  the  flour  is  being 
separated  from  the  other  parts  of  the  meal  by  means  of 
fine  cloth  sieves,  commonly  called  "bolts."  The  patent 
described  a  suitable  apparatus  by  means  of  which  to  prac- 
tice this  process.  It  consisted  of  a  series  of  cylindrical 
sieves,  covered  with  cloth  of  progressively  finer  meshes, 
and  having  within  them  a  series  of  air  pipes,  so  disposed 
that  when  the  ground  wheat  was  in  the  sieves,  and  the 
sieves  were  revolving,  air  blasts  were  blown  from  the  ends 
of  those  pipes,  into  and  among  the  particles  of  ground 
wheat.  Those  air  blasts  operated  to  blow  the  impurities 
through  the  opening  in  the  top  of  the  bolting  chamber, 
at  the  same  time  that  the  revolutions  of  the  sieves  operated 

4  Cochrane  v.  Deener,  94  U.  S.  787,  1876. 


CHAP.    XVI.]  INFRINGEMENT  421 

to  separate  the  flour  from  the  middlings.  The  result 
of  the  whole  operation  was  to  separate  the  ground  wheat 
into  three  sorts  of  matter,  and  to  place  those  three  sorts 
in  three  different  receptacles. 

The  defendant  accomplished  the  same  result,  by  win- 
nowing the  impurities  out  of  the  ground  wheat,  while  the 
flour  was  being  separated  from  the  other  parts  of  the  meal 
by  means  of  fine  cloth  sieves.  But  the  defendant's  sieves 
were  flat,  and  the  air  blasts  were  blown  through  those 
sieves  from  below  and  reached  the  impurities  through 
the  cloth,  instead  of  reaching  them  from  the  ends  of  pipes 
located  on  the  same  side  of  the  cloth,  as  that  occupied 
by  the  ground  wheat.  The  Supreme  Court,  however, 
held  that  process  to  infringe  the  complainant's  patent, 
notwithstanding  these  differences. 

§  338.  No  process  patent  is  infringed  where  any  one  of 
the  series  of  acts  which  constitute  the  process  is  omitted 
by  the  supposed  infringer,  unless  some  equivalent  act  is 
substituted  for  the  one  omitted.5  Precisely  what  consti- 
tutes equivalency,  as  between  acts,  has  never  been  decided 
or  stated  by  the  Supreme  Court.  Reason  seems  to  indi- 
cate that  one  act  is  the  equivalent  of  another  when  it 
works  in  substantially  the  same  way  to  accomplish  the 
same  result.  Accordingly,  it  has  been  held  that  tamping 
oil  wells  with  benzine,  is  equivalent  to  tamping  them  with 
water  in  respect  of  the  series  of  acts  which  constitute  the 
process  covered  by  the  Roberts  torpedo  patent.6  An 
addition  to  a  patented  process  does  not  avert  infringement, 

5  Royer  v.  Coupe,  146  U.  S.  531,  Electric  Co.,  41  F.  R.  679,  1890; 

1892;  Dittmar  v.  Rix,  1  F.  R.  342,  Brush  Electric  Co.  v.  Accumulator 

1880;  Hammerschlag  v.  Garrett,  Co.,  47  F.  R.  49,  1891;  Kennedy  v. 

10  F.   R.   479,    1882;   Cotter  v.  Solar  Refining  Co.,  69  F.  R.  718, 

Copper  Co.,  13  F.  R.  234,  1882;  1895. 

Arnold  v.  Phelps,  20  F.  R.  315,  •  Roberts  v.  Roter,  5  Fisher,  296, 

1884;  Brush  Electric  Co.  v.  Julien  1872. 


122  [INFRINGEMENT  [CHAP.    \\  I. 

even  where  the  addition  is  an  improvement.7  Neither 
is  infringement  avoided  by  merely  reversing  the  steps 
in  the  process,  when  the  same  result  is  accomplished  in 
substantially  the  same  way,8  nor  by  the  fact  that  the  proc- 
ess is  used  by  the  infringer  for  the  attainment  of  a  differ- 
ent object,9  nor  by  the  mere  fact  that  two  or  more  steps  in 
the  process  are  not  taken  simultaneously,  where  simul- 
taneous action  is  not  necessary  to  the  result  or  to  inven- 
tion.10 But  infringement  of  a  process  patent,  is  absent 
from  a  process  which  does  not  proceed  with  substantially 
the  same  mode  of  operation  as  that  of  the  process  described 
and  claimed  in  the  patent.11 

A  process  patent  is  not  infringed  by  the  purchase  in 
the  open  market  of  a  product  of  the  process  made  by  an 
infringing  user  of  the  process.11* 

§  339.  Machines  and  manufactures  may  well  be  treated 
together  in  respect  of  infringement,  because  no  exact  line 
can  be  drawn  between  them,  and  because  the  same  rules 

7  Lalance  &  Grosjean  Mfg.  Co.  Co.,  177  F.  R.  430,  1910;  Chad- 
v.  Habermann  Mfg.  Co.,  53  F.  R.  eloid  Chemical  Co.  v.  F.  W. 
380,  1892;  Tuttle  v.  Matthews,  28  Thurston  Co.,  220  F.  R.  685, 
F.  R.  98,  1886;  New  York  Filter  1915. 

Co.  v.  Schwarzwalder,  58  F.  R.          9U.   S.   Mitis  Co.  v.  Midvale 

579,  1893;  Edison  Electric  Light  Steel  Co.,  135  F.  R.  103,  1904. 
Co.    v.    Philadelphia   Trust   Co.,  10Fullerton    Walnut    Growers' 

60  F.  R.  398,  1894;  Ford  Morocco  Ass'n     v.     Anderson-Barngrover 

Co.  v.  Tannage  Patent   Co.,  84  Mfg.  Co.,  166  F.  R.  443,  1908. 
F.  R.  644,  1898.  "  Philadelphia  Creamery  Sup- 

8  Burdon  Wire  &  Supply  Co.  v.  ply  Co.  v.  Davis  &  Rankin  Bldg. 
Williams,  128  F.  R.  927,  1904;  &  Mfg.  Co.,  79  F.  R.  357,  1897; 
Malignani  v.  Germania  Electric  Electric  Smelting  &  Aluminum 
Lamp  Co.,  (citing  numerous  Co.  v.  Pittsburg  Reduction  Co., 
cases),  169  F.  R.  299,  1909;  Gen-  111  F.  R.  742,  1901. 

eral  Electric  Co.  v.   Hill- Wright  "a  American  Graphophone  Co. 

Electric  Co.,  174  F.  R.  996,  1909;  v.  Gimbel  Bros.,  234  F.  R.  361, 
Malignani  v.  Hill- Wright  Electric      1916. 


CHAP.    XVI.]  INFRINGEMENT  423 

of  infringement  are  applicable  to  both  those  classes  of 
tangible  things.  A  patent  for  a  machine  or  manufacture 
is  infringed  by  him  who,  without  ownership  or  license, 
makes,  or  uses,  or  sells  any  specimen  of  the  thing  covered 
by  any  claim  of  that  patent.  Merely  making  without  sell- 
ing is  an  infringement.12  It  is  not  an  infringement  of  a 
patent,  to  make,  use,  or  sell  any  specimen  of  any  invention 
described  but  not  claimed  therein; 13  because  a  patent 
covers  only  what  it  claims.  But  whoever  infringes  any 
one  claim  of  a  patent  infringes  the  patent,  whether  or  not 
it  contains  other  claims  which  he  does  not  infringe.14 

Whether  a  particular  thing  made  or  used  or  sold  by  a 
particular  person,  infringes  a  particular  claim  of  a  partic- 
ular patent,  is  always  a  question  of  fact.  In  some  cases 
that  question  can  readily  be  decided  by  the  application 
of  one  rule  of  law,  and  sometimes  by  the  application  of 
another,  and  sometimes  it  can  be  decided  only  by  the 
judicial  sagacity  of  the  tribunal  before  which  the  question 
is  tried.  Such  relevant  rules  of  law  as  are  well  established, 
will  now  be  stated,  and,  as  far  as  necessary,  will  be  illus- 
trated by  describing  the  leading  cases  which  embody  them. 

§  340.  The  respective  results  of  a  machine  or  manufac- 
ture covered  by  the  claim  of  a  patent,  and  of  a  machine 
or  manufacture  alleged  to  infringe  that  claim,  do  not 

12  Carter  Crume  Co.  v.  Am.  Story,  273,  1840;  Pitts  v.  Whit- 
Sales  Book  Co.,  124  F.  R.  903,  man,  2  Story,  609,  1843;  Colt  v. 
1903.  Arms  Co.,   1  Fisher,   108,   1851; 

13  Howe  v.  Williams,  2  Cliff.  262,  Pitts  v.  Wemple,  2  Fisher,  10, 
1863;  Waterbury  Brass  Co.  v.  1855;  Foss  v.  Herbert,  1  Bissell, 
Miller,  9  Blatch.  93,  1871;  Toohey  121,  1856;  Morris  v.  Barrett,  1 
v.  Harding,  4  Hughes,  253,  1880;  Bond,  254,  1859;  Singer  v.  Walms- 
Buffington's  Iron  Building  Co.  v.  ley,  1  Fisher,  558,  1860;  McComb 
Eustis,  65  F.  R.  807,  1895.  v.  Brodie,   1  Woods,   153,   1871; 

14  Moody  v.  Fiske,  2  Mason,  McComb  v.  Ernest,  1  Woods,  195, 
115,    1820;    Wyeth    v.    Stone,    1  1871. 


[24  INFRINGEMENT?  [<3HAP.    XVI. 

furnish  a  criterion  by  which  to  decide?  the  question  of 
infringement.1.  Those  results  may  be  identical,  while 
the  tilings  which  produce  them  are  substantially  different. 
Any  person  may  accomplish  the  result  performed  by  a 
patented  thing  without  infringing  the  patent,  if  he  uses 
means  substantially  different  from  those  of  the  patent."5 
To  hold  the  contrary  of  this  rule  would  be  to  retard,  and 
not  to  promote  the  progress  of  the  useful  arts.17  So  also, 
on  the  other  hand,  the  result  of  an  alleged  infringing 
machine  or  manufacture  may  be  different  from  the  result 
described  in  the  patent  without  causing  that  machine  or 
manufacture  to  escape  the  charge  of  infringement,  even 
when  that  charge  is  based  on  unlicensed  using.  This 
rule  results  from  the  well-established  point  of  law  that  it 
is  an  infringement  of  a  patent  to  use  any  machine  or 
manufacture  claimed  therein,  though  such  use  is  for  a 
purpose  which  is  not  mentioned  in  the  patent.18  But  a 
machine,  which  can  do  a  particular  kind  of  work,  is  not 
an  infringement  of  a  patent  on  a  different  machine,  which 
cannot  do  the  same  work.19 

15  Westinghouse      v.      Boyden  1865;     McComb    v.    Brodie,     1 

Power-Brake  Co.,  170  U.  8.  562,  Woods,  159, 1871;  Zinn  v.  Weiss,  7 

1898;   Powell   v.    Leicester   Mills  F.  R.  916,  1881;  Union  Stone  Co. 

Co.,  103  F.  R.  485,  1900;  Amer-  v.  Allen,  14  F.  R.  353,  1882;  Cin- 

ican  Fur  Refining  Co.  v.  Cimiotti  cinnati  Ice  Machine  Co.  v.  Brew- 

Unhairing  Mach.  Co.,  123  F.  R.  ing  Co.,  31  F.  R.  472,  1887. 
874,  1903.  19  Norton  v.  Jensen,  49  F.  R. 

18  O'Reilly  v.  Morse,  15  How-  875,  1892;  Ford  v.  Bancroft,  98 

ard,   62,   1853;  Steam  Gauge  &  F.  R.  309,  1899;  Miller  v.  Last 

Lantern  Co.  v.  Mfg.  Co.,  29  F.  R.  Co.,  105  F.  R.  525,  1900;  Branson 

447,  1886;  Johnson  Furnace  Co.  ».   Kutz,    105   F.   R.   974,    1901; 

r.    Western    Furnace    Co.,    178  Davey    Pegging    Mach.    Co.    v. 

F.  R.  819,  1910.  Prouty,  107  F.  R.  510,  1901;  Gen- 

17  Smith  v.  Downing,  1  Fisher,  eral    Electric    Co.    p.    Brooklyn 

84,  1850.  Heights  R.  Co.,   118  F.  R.   154, 

»  Mabie  v.  Haskell,  2  Cliff.  511,  1902. 


CHAP.    XVI.]  INFRINGEMENT  42") 

§  341.  Mode  of  operation  is  a  criterion  of  infringement 
on  one  side  of  that  question,  but  not  on  the  other.  If  the 
mode  of  operation  of  an  alleged  infringing  thing  is  sub- 
stantially different  from  that  covered  by  the  claim  alleged 
to  be  infringed,  it  follows  that  the  charge  of  infringement 
must  be  negatived ; 20  but  if  the  mode  of  operation  is  sub- 
stantially the  same,  it  does  not  follow  that  the  charge  of 
infringement  must  be  affirmed.21  In  that  case  the  ques- 
tion must  be  decided  by  some  additional  criterion.  To 
establish  an  infringement  of  a  claim,  the  facts  must  be 
subjected  to  several  successive  tests.  If  the  case  fails  on 
either  of  those  tests,  no  further  inquiry  need  be  made; 
but  an  infringement  cannot  be  affirmed  till  all  those  tests 
have  been  applied  and  have  been  withstood.  The  first 
of  these  is  that  which  relates  to  identity  of  mode  of  opera- 
tion. It  is  therefore  important  to  know  wherein  this 
requisite  identity  consists.  A  dogmatic  statement  on  that 
point  has  probably  never  been  ventured  by  any  court. 
The  nature  of  the  question  seems  not  to  admit  of  an  an- 
swer which  shall  be  at  once  short  and  sufficient.  The 
best  way  to  investigate  the  subject  is  probably  to  reason 
by  analogy  from  precedents;  and  accordingly  several  of 
the  sections  which  immediately  follow,  are  devoted  to  an 
analysis  of  cases,  with  a  view  to  furnishing  the  investigator 
with  data  for  such  reasoning. 

§  342.  The  Cawood  patent22  covered  a  machine  which 
combined  the  mode  of  operation  of  an  anvil,  with  the  mode 

»  Field  v.  De  Coraeau,  116  U.  S.  Brake  Co.,  119  F.  R.  884,  1902; 

187,    1886;    Yale    Lock    Co.    v.  American   Steel  &   Wire  Co.   v. 

Sargent,    117   U.    S.    378,    1886;  Denning  Wire  &  Fence  Co.,  194 

Smith  v.  Downing,  1  Fisher,  83,  F.  R.  117,  1912. 

1850;  Eames  v.  Cook,  2  Fisher,  21  Diamond  Drill  &  Mach.  Co. 

149,  1860;  Enterprise  Co.  v.  Snow,  v.  Kelly  Bros.,  120  F.  R.  293,  1903. 

80  F.  R,  537,  1897;  Westinghouse  "  Cawood  Patent,  94  U.  S.  706, 

Air-Brake  Co.  v.  New  York  Air-  1876. 


126  INFRINGEMENT  [CHAP.    XVI. 

of  operation  of  a  vise.  A  drawing  of  the  machine  is  printed 
on  page  492  of  1  Wallace.  The  railroad  rail  mended  upon 
it,  was  supported  by  it  as  by  an  anvil;  and  at  the  same 
time  was  clasped  by  it  as  by  a  vise.  The  Supreme  Court 
held  that  the  "Michigan  Southern"  machine  did  not 
infringe  the  Cawood  patent,  because  while  that  machine 
did  clasp  the  rail  as  a  vise,  it  did  not  support  the  rail  as  an 
anvil.  The  same  tribunal  also  held  that  the  Beebe  and 
Smith  machine  did  not  infringe  the  Cawood  patent,  be- 
cause its  mode  of  operation  was  different.  It  both  sup- 
ported and  clasped  the  rail;  but  it  clasped  it  by  holding 
it  between  two  jaws,  which  jaws,  when  in  position,  rested 
in  a  V-shaped  notch  in  the  anvil.  The  exterior  of  the  jaws 
were  also  V-shaped,  in  order  to  fit  the  notch,  and  they 
clasped  the  rail  because  of  their  gravity,  and  not  in  the 
manner  of  a  vise.  They  also  supported  the  rail,  but  in  a 
manner  peculiar  to  themselves,  and  not  in  the  manner 
of  an  anvil. 

§  343.  The  driven-well  patent,  reissue  No.  4372,  covers 
an  interesting  invention.  That  invention  is  practiced  by 
driving  into  the  ground  a  long  tube  closed  and  pointed  at 
its  lower  end,  and  having  perforations  through  its  sides 
just  above  that  end;  and  by  attaching  a  pump  to  its  upper 
end;  and  by  working  that  pump  whenever  water  is  de- 
sired. The  mode  of  operation  of  that  well  is  as  follows: 
The  working  of  the  pump  rarefies  the  air  in  the  tube,  and 
outside  of  the  tube  in  the  neighborhood  of  its  lower  end, 
and  that  rarefication  causes  the  air  above  the  ground  to 
force  the  water  in  several  millions  of  cubic  feet  of  the  sur- 
rounding earth,  into  and  up  the  tube. 

The  alleged  infringer  in  one  case,23  followed  the  patent 
in  every  particular  except  that  instead  of  driving  the  tube 
into  the  earth,  or  into  a  hole  previously  made  by  driving 
23  Andrews  v.  Long,  12  F.  R.  871,  1880. 


(  HAP.    XVI.]  INFRINGEMENT  427 

down  a  rod  smaller  than  the  tube,  he  bored  a  hole  into  the 
earth  with  an  auger  larger  than  the  tube  which  he  placed 
in  the  hole  after  the  auger  was  withdrawn.  This  appar- 
ently slight  change  caused  the  well  to  have  a  substantially 
different  mode  of  operation  from  that  covered  by  the  pat- 
ent. The  pump,  indeed,  rarefied  the  air  in  the  tube  as 
before,  but  that  rarefication  did  not  extend  into  the  ground 
around  the  outside  of  the  tube,  because  the  space  outside 
of  the  lower  end  of  the  tube  was  in  direct  communication 
with  external  air,  through  the  annular  space  which  sur- 
rounded the  tube  throughout  its  entire  length,  and  which 
was  due  to  the  fact  that  the  tube  was  smaller  than  the  hole 
in  which  it  was  placed.  Because  of  this  difference,,  Judge 
McCrary,  with  excellent  discrimination,  held  that  the 
well  of  the  defendant  did  not  infringe  the  driven-well 
reissue. 

§  344.  Blanchard's  patent  for  a  machine  for  turning 
and  cutting  irregular  forms  consisted  of  a  combination  of 
a  model,  a  guide,  and  a  cutter-wheel.  When  the  machine 
was  in  operation,  the  guide  followed  the  irregularities  of 
the  model,  as  the  model  revolved;  and  the  guide  also  caused 
the  cutter  to  follow  the  same  irregular  curves,  while  the 
rough  block  was  revolved  under  the  cutting  edges.  Both 
model  and  block  had  a  continuous  lateral  motion,  as  well 
as  a  continuous  rotary  motion,  and  therefore  the  guide 
and  the  cutter-wheel  proceeded  in  corresponding  spiral 
courses.  In  that  way,  the  guide  traversed  all  parts  of  the 
surface  of  the  model,  and  the  cutter-wheel  traversed  all 
portions  of  the  rough  block,  and  thus  reduced  the  latter 
to  conformity  with  the  shape  of  the  model.  An  infringer 
in  one  case 24  so  combined  the  parts  of  the  machine  that 
the  model  and  rough  block  both  rotated  by  an  intermit- 
tent motion,  and  moved  laterally  by  a  rectilinear  recipro- 
24  Blanchard  v.  Reeves,  1  Fisher,  103,  1850. 


128  INFRINGEMENT  [CHAP.    XVI. 

eating   motion.      Justice   GrIEB    hold    thai    this   mode   of 

operation  was  substantially  unchanged  from  that  of  the 
patent. 

§  345.  Hayden's  patent  for  a  machine  for  making  brass 
kettles  consisted  of  two  general  divisions.  1.  An  engine 
lathe  with  its  mandrel  to  revolve  the  pulleys  and  the  gear- 
ing, and  having  special  devices  for  the  special  work  in 
hand.  2.  A  burnishing  or  spinning  tool  and  tool  carriage, 
secured  to  the  frame  of  the  lathe,  and  having  special  de- 
vices to  make  it  work  harmoniously  with  the  lathe  in  pro- 
ducing the  kettles  which  the  two  divisions  of  the  machine 
jointly  operated  to  manufacture.  These  two  divisions 
were  operated  by  one  moving  thing,  like  a  shaft,  which 
might  be  connected  with  a  water  wheel,  or  with  a  steam 
engine,  or  with  any  other  suitable  motor. 

The  infringer  in  one  case 25  operated  the  first  division  of 
the  machine  by  one  such  motive  power;  but  he  operated 
the  second  division  by  another,  namely,  by  the  hand  of  a 
workman  turning  a  crank.  Judge  Woodruff  held 
that  this  was  not  such  a  change  of  mode  of  operation  as 
amounted  to  enough  to  negative  infringement. 

§  346.  The  Wells  hat-body  machine  consisted  of  a 
revolving  brush  to  separate  and  throw  fibres  of  fur;  a 
perforated  vacuum  cone  to  receive  the  fur  on  its  exterior 
surface;  and  an  intermediate  tunnel,  to  guide  the  fur 
from  the  brush  to  the  cone.  The  patent  which  was  granted 
for  that  invention  was  three  times  surrendered  and  re- 
issued. The  second  reissue  was  involved  in  a  celebrated 
Supreme  Court  case. 26  That  reissue  described  the  machine 
which  Wells  invented,  and  it  claimed  the  mode  of  opera- 
tion, substantially  as  described,  of  forming  "bats"  (hat 
bodies)  of  fur  fibres.    The  object  of  this  claim  was  to  cover 

-5  Waterbury  Brass  Co.  v.  Mil-  26  Burr  v.  Duryee,   1  Wallace, 

ler,  9  Blatch.  94,  1871.  531,  1863. 


CHAP.    XVI. j  INFRINGEMENT  429 

the  machine  of  Seth  Boyden;  a  machine  which  had  the 
same  general  mode  of  operation  as  that  of  Wells,  but  which 
was  substantially  different  from  the  latter  in  one  of  its 
parts.  This  attempt  to  base  a  charge  of  infringement  on 
sameness  of  "mode  of  operation"  alone  was  occasioned 
by  the  fact  that  Justice  Curtis,  in  delivering  the  opinion 
of  the  Supreme  Court  in  the  case  of  Winans  v.  Denmead,'-7 
had  used  the  phrase  with  great  frequency.  He  used  it 
exactly  twenty  times  in  that  case;  and  the  counsel  for 
the  Wells  patent,  when  arguing  the  case  of  Burr  v.  Duryee, 
formulated  seven  doctrines  which  they  stated  were  de- 
ducible  from  that  score  of  instances.  Among  those  doc- 
trines the  fourth  was  this :  That  copying  a  mode  of  opera- 
tion is  an  infringement.  But  Justice  Grier,  who  was  one 
of  the  majority  of  the  court  which  decided  Winans  v. 
Denmead,  was  convinced  that  the  latter  decision  was 
erroneous,  or  that  it  did  not  mean  what  it  was  generally 
understood  to  signify,  for  in  Burr  v.  Duryee  he  delivered 
the  unanimous  opinion  of  the  Supreme  Court  rejecting 
the  complainant's  contention.  The  case  of  Winans  v. 
Denmead  cannot  therefore  be  fairly  cited  as  an  authority 
on  this  point,  for  if  it  is  not  consistent  with  Burr  v.  Duryee, 
it  was  overruled  by  the  latter,  and  if  it  is  consistent  with 
the  latter  case,  its  expressions  are  likely  at  least  to  mislead 
the  reader,  as  they  misled  the  counsel  for  the  Wells  patent. 
Harmoniously  with  its  decision  in  Burr  v.  Duryee,  the 
Supreme  Court  has  since  had  a  positive  tendency  to  dis- 
regard whatever  is  abstract  and  intangible  in  questions 
of  infringement,  and  to  base  its  conclusions  upon  the  con- 
crete features  of  the  issues  at  bar. 

§  346a.  The  Pope  electric  railroad  signal  consisted  of 
the  combination  of  an  electric  battery ;  a  peculiar  arrange- 
ment of  electric  circuits;  and  two  or  more  circuit  closers, 

-7  Winans  v.  Denmead,  15  Howard,  330,  1853. 


430  INFRINGEMENT  [CHAP.    XVI. 

operating  fcWO  or  more  visual  or  audible  signals,  situated 

at  intervals  along  the  line  of  a  railroad.  That  peculiar 
arrangement  of  electric  circuits  essentially  consisted  in 
attaching  two  line  wires  to  the  positive  and  negative  poles 
of  a  battery,  respectively;  and  in  extending  both  of  those 
wires  any  required  distance  in  a  direction  substantially 
parallel  to  the  line  of  the  railroad;  and  insulating  both 
from  the  earth  and  from  each  other;  and  in  connecting 
one  of  them  at  intervals  with  insulated  rails  in  one  of  the 
two  lines  of  rails  of  the  railroad  track;  and  in  connecting 
the  other  one  of  those  wires  at  the  same  intervals  with 
insulated  rails  in  the  other  line  of  rails  of  the  same  track; 
and  interposing  an  electromagnet  at  some  point  in  each 
of  these  latter  connections.  An  alleged  infringer  in  one 
case  28  used  an  electric  railroad  signal  differing  from  that 
of  Pope  mainly  in  the  peculiar  arrangement  of  the  electric 
circuits.  That  difference  consisted  mainly  in  disconnect- 
ing the  negative  pole  of  the  battery  from  its  line  wire,  and 
in  connecting  that  pole  with  the  earth  adjacent  thereto, 
and  in  connecting  the  remote  end  of  the  disconnected 
line  wire  with  the  earth  adjacent  to  that  end.  These 
changes  of  arrangement  changed  the  mode  of  operation 
of  the  apparatus,  in  that  they  caused  the  electricity  to 
traverse  circuits  of  equal  length  when  the  series  of  circuit 
closers  were  successively  operated,  whereas  Pope's  arrange- 
ment caused  the  electricity  to  traverse  circuits  of  widely 
variant  lengths  at  such  times.  This  change  of  mode 
of  operation  resulted  in  a  uniformity  of  electrical  resistance 
among  all  the  circuits,  and  thus  much  increased  the  utility 
of  the  apparatus.  The  Supreme  Court  therefore  held  the 
alleged  infringer's  combination  to  be.  an  independent 
invention,  substantially  different  from  that  of  Pope,  and 
not  an  infringement  of  his  patent. 

-'8  Electric  Signal  Co.  v.  Hall  Signal  Co.,  114  U.  S.  87,  1885. 


CHAP.    XVI.]  INFRINGEMENT  431 

§  347.  Addition  to  a  patented  machine  or  manufacture 
does  not  enable  him  who  makes,  uses,  or  sells  the  patented 
thing  with  the  addition,  to  avoid  a  charge  of  infringement.29 
This  is  true  even  where  the  added  device  facilitates  the 
working  of  one  of  the  parts  of  the  patented  combination, 
and  thus  makes  the  latter  perform  its  function  with  more 
excellence  and  greater  speed ; 30  or  where  the  added  part 
hinders  the  patented  combination  from  having  some 
of  its  minor  merits.31  And  duplication  in  a  machine  or 
manufacture,  of  one  of  its  parts  or  features,  is  but  a  form 
of  addition  thereto;  and  falls  in  the  same  category,  in 
respect  of  not  avoiding  infringement  of  a  patent  on  that 
machine  or  manufacture.32  But  if  a  patented  combina- 
tion differs  from  some  older  combination,  only  in  the  omis- 
sion of  one  of  the  parts  of  the  latter;  and  in  a  resulting 
difference  of  mode  of  operation,  the  restoration  of  the 
older  structure  by  adding  the  part  which  the  patented 
combination  omitted,  would  not  constitute  an  infringe- 
ment of  the  latter.33 

29  Western    Electric  Co.  v.  La  See  Section  376. 

Rue,  139  U.  S.  607,  1891;  Carr  v.  3°  Cochrane  v.  Deener,  94  U.  S. 

Rice,  1  Fisher,  209,  1856;  Roemer  786, 1876;  Brislin  v.  Carnegie  Steel 

v.   Simon,   20  F.   R.    197,    1884;  Co.,  118  F.  R.  597,  1902;  Colum- 

Royer  v.  Coupe,  29  F.  R.  366,  bia  Wire  Co.  v.  Kokomo  Steel  & 

1886;  Filley  v.  Stove  Co.,  30  F.  R.  Wire  Co.,  143  F.  R.  116,  1905. 

434,  1887;  Williames  v.  Barnard,  31  Sawyer  Spindle  Co.  v.  Morri- 

41    F.    R.    358,    1890;    Goshen  son  Co.,  52  F.  R.  593,  1892;  Am. 

Sweeper  Co.   v.   Bissell  Sweeper  Laundry    Mach.     Mfg.    Co.    v. 

Co.,  72  F.  R.  67,  1895;  Sprague  Adams  Laundry  Mach.  Co.,  161 

Electric  Railway  &  Motor  Co.  v.  F.  R.  556,  1908. 

Union  Ry.  Co.,  84  F.  R.  641, 1898;  32  Goldie  v.  Diamond  State  Iron 

Western  Electric  Co.  v.  Capital  Co.,  81  F.  R.  176,  1897;  General 

Tel.  &  Tel.  Co.,  86  F.  R.  778,  Compressed  Air,  etc.,  Co.  w.Amer- 

1898;    Newton    v.    McGuire,    97  ican  Air  Cleaning  Co.,  177  F.  R. 

F.  R.  614,  1899;  1900  Washer  Co.  272,  1910. 

v.  Cramer,  169  F.  R.  629,  1909.  33  Shoemaker    v.    Merrow,    61 


l.i'J  INFRINGEMENT  [CHAP.    XVI. 

§  348.  Changing  the  relative  positions  of  the  parts  of 
a  machine  or  manufacture  does  not  avert  infringement, 
where  the  parts  transposed  perform  the  same  respective 
functions  after  the  change  as  before.31  In  the  first  of  the 
cases  just  cited,  the  thing  transposed  was  a  beater  shaft 
in  a  corn-sheller.  Both  in  its  original  and  in  its  new  posi- 
tion, its  function  was  to  force  the  ears  of  corn  into  the 
throat  of  the  sheller.  In  the  second  case,  the  thing  trans- 
posed was  the  outlet  vapor  flue  of  a  quicksilver  furnace; 
and  that  flue  operated  in  the  same  way  to  perform  the 
same  function  in  the  infringing  apparatus  that  it  did  in 
the  patented  furnace. 

But  changing  the  relative  positions  of  the  parts  of  a 
machine  does  avert  infringement,  where  the  changing  of 
those  positions  so  changes  the  functions  of  the  parts,  that 
the  machine  acquires  a  substantially  different  mode  of 
operation,  even  though  the  result  of  the  machine  remains 
the  same.35  A  suit  for  infringement  cannot  be  sustained 
against  him  who  makes,  uses,  or  sells  a  substantially  differ- 
ent combination,  even  though  it  includes  exactly  the  same 
ingredients  as  those  claimed  in  combination  by  the  patent 
in  suit.36    The  owner  of  a  patent  for  a  combination  can- 

F.   R.  948,   1894;  Am.  Laundry  Steam-Pump  Co.  v.  Battle  Creek 

Mach.  Mfg.  Co.  v.  Adams  Laun-  Steam-Pump  Co.,  104  F.  R.  342, 

dry  Mfg.  Co.,  161  F.  R.  556,  1908.  1900;  Metallic  Extraction  Co.  v. 

« Adams  w.  Mfg.  Co.,  3  Bann.  &  Brown,    104    F.    R.    352,    1900; 

Aid.    1,    1877;    Knox   v.    Quick-  Brislin  v.  Carnegie  Steel  Co.,  118 

silver  Mining  Co.,  6  Sawyer,  438,  F.  R.  591,  1902;  Anchor  Cap  & 

1878;   Northwestern   Horse  Nail  Closure  Corp.  v.  Pritchard,  232 

Co.  v.  Horse  Nail  Co.,  28  F.  R.  F.  R.  156,  1916. 
234,    1886;    Consolidated    Roller         35  Brooks  v.  Fiske,  15  Howard, 

Mill  Co.  v.  Coombs,  39  F.  R.  33,  221,    1853;    Union   Steam-Pump 

1889;  Devlin  v.  Paynter,  64  F.  R.  Co.  v.  Battle  Creek  Steam-Pump 

400,  1894;  Huntington  Dry  Pul-  Co.,  104  F.  R.  343,  1900. 
verizer  Co.  v.  Whittaker  Cement          M  Gill  v.  Wells,  22  Wallace,  14, 

Co.,  89  F.  R.  328,   1898;  Union  1874;  Snow  v.  Railway  Co.,  121 


CHAP.    XVI.] 


INFRINGEMENT 


433 


not  suppress  a  newer,  better,  and  substantially  different 
combination  of  the  same  ingredients.'17 

§  349.  Omission  of  one  element  or  ingredient  of  a  com- 
bination covered  by  any  claim  of  a  patent,  averts  any 
charge  of  infringement  based  on  that  claim,38  whether 
or  not  the  omitted  ingredient  was  essential  to  the  combina- 
tion of  the  patent,  and  whether  or  not  it  was  necessary 
to  the  operativeness  of  the  device.39  And  it  makes  no 
difference  that  another  element  is  made  to  do  the  work  of 
itself  and  of  the  omitted  element.40  A  combination  is  an 
entirety.  If  one  of  its  elements  is  omitted,  the  thing 
claimed  disappears.  Every  part  of  the  combination 
claimed  is  conclusively  presumed  to  be  material  to  the 
combination,  and  no  evidence  to  the  contrary  is  admissible 


U.  S.  629,  1886;  Singer  Mfg.  Co. 
v.  Brill,  54  F.  R.  384,  1892. 

37  Seymour  v.  Osborne,  11  Wal- 
lace, 555,  1870. 

38  Prouty  v.  Ruggles,  16  Peters, 
341,  1842;  Eames  v.  Godfrey,  1 
Wallace,  78,  1863;  Case  v.  Brown, 
2  Wallace,  328,  1864;  Dunbar  v. 
Myers,  94  U.  S.  187,  1876;  Fuller 
v.  Yentzer,  94  U.  S.  297,  1876; 
Rowell  v.  Lindsay,  113  U.  S.  102, 
1884;  Shepard  v.  Carrigan,  116 
U.  S.  597,  1885;  Sharp  v.  Riessner, 
119  U.  S.  636,  1886;  Derby  v. 
Thompson,  146  U.  S.  482,  1892; 
Weatherhead  v.  Coupe,  147  U.  S. 
335,  1893;  Dobson  v.  Cubley,  149 
U.  S.  120,  1893;  Wright  v.  Yueng- 
ling,  155  U.  S.  52,  1894;  Black 
Diamond  Coal  Co.  v.  Excelsior 
Coal  Co.,  156  U.  S.  617,  1895; 
Levy  v.  Harris,  130  F.  R.  711, 
1904;  Mallon  v.  Gregg  &  Co.,  137 


F.  R.  68,  1905;  Central  Foundry 
Co.  v.  Coughlin,  141  F.  R.  91, 
1905;  Consolidated  Engine  Stop 
Co.  v.  Landers,  Frary  &  Clarke, 
160  F.  R.  79,  1908;  Portland  Gold 
Mining  Co.  v.  Hermann,  160  F.  R. 
91,  1908;  Electric  Protection  Co. 
v.  American  Bank  Protection  Co., 
184  F.  R.  916,  1910;  National 
Cash  Register  Co.  v.  Gratigny, 
213  F.  R.  463,  1914;  Steiger  v. 
Waite  Grass  Carpet  Co.,  213  F.  R. 
798,  1914;  Cimiotti  Unhairing  Co. 
v.  American  Fur  Refining  Co.,  198 
U.  S.  399,  1905;  Proudfit  Loose 
Leaf  Co.  v.  Kalamazoo  Loose  Leaf 
Binder  Co.,  230  F.  R.  120,  1915. 

39  Hall-Mammoth  Incubator 
Co.  v.  Teabout,  215  F.  R.  109, 
1914. 

40  Underwood  Typewriter  Co.  v. 
Royal  Typewriter  Co.,  224  F.  R. 
477,  1915. 


434  [NPRINGEMENT  [CHAP.    XVI. 

in  any  case  of  alleged  infringement.43  The  patentee  makes 
all  the  parts  of  a  combination  material,  when  he  claims 
I  hem  in  combination  and  not  separately.'-'  A  patentee 
may,  however,  describe  all  the  devices  in  his  machine  or 
manufacture,  and  instead  of  claiming  all  or  any  particu- 
lar portion  of  them  in  combination,  may  claim  so  much 
of  the  described  mechanism  as  produces  a  particular  de- 
scribed result.43  Such  a  claim  is  infringed  by  him  who, 
without  ownership  or  license,  makes,  uses,  or  sells  any 
apparatus  made  up  of  enough  of  the  described  devices 
to  produce  the  specified  result,  by  the  specified  mode  of 
operation.44  The  rule  stated  at  the  head  of  this  section 
is  perhaps  the  best  known  and  most  frequently  applied 
of  all  the  rules  which  pertain  to  infringement ;  but  it  has  no 
application  to  anything  which  depends  upon  a  particular 
form  for  patentability,  and  which,  for  convenience,  may 
be  made  in  several  sections.  A  shoe  last,  for  example, 
even  if  made  in  only  two  sections,  may  infringe  a  patent 
for  a  last  of  the  same  shape,  but  which  is  made  in  three 
sections  instead  of  in  two.45  And  infringement  is  not 
averted  by  uniting  two  elements  of  a  machine  or  manu- 
facture into  one  integral  part,  if  the  united  part  performs 

41  Vance  v.  Campbell,  1  Black,  41,  1885;  Otley  v.  Watkins,  36 
430,  1861;  Fay  v.  Cordesman,  109  F.  R.  324,  1888;  Levy  v.  Harris, 
U.  S.  420,  1883;  Sargent  v.  Lock  124  F.  R.  71,  1903;  Electric  Pro- 
Co.,  114  TJ.  S.  86,  1884;  Shepard  tection  Co.  v.  American  Bank 
v.  Carrigan,  116  U.  S.  597,  1885;  Protection  Co.,  184  F.  R.  916, 
Yale  Lock  Co.   v.   Sargent,    117  1910. 

U.  S.  378,  1885;  McClain  v.  Ort-  «  Parsons  v.  Seelye,  100  F.  R. 

mayer,  141  U.  S.  425,  1891;  Hub-  458,  1900. 

bell  v.  United  States,  179  U.  S.  "Silsby  v.  Foote,  14  Howard, 

82,  1900.  218,  1852. 

42  Water-Meter  Co.  v.  Desper,  45  Mabie  v.  Haskell,  2  Cliff.  511, 
101  U.  S.  332,  1879;  Brown  v.  1865;  White  v.  Walbridge,  46  F.  R. 
Davis,  116  U.  S.  249,  1885;  Wil-  526,  1891. 

hams   v.   Stolzenbach,   23   F.    R. 


(HAP.    XVI.] 


INFRINGED  K.N iT 


435 


the  same  function  in  substantially  the  same  way,  as  did 
the  separate  parts  before  the  union; 46  nor  by  the  separa- 
tion of  one  integral  part  into  two,  the  two  parts  doing 
substantially  what  was  done  by  the  single  part.47 

§  350.  No  substitution  of  an  equivalent,  for  any  ingre- 
dient of  a  combination  covered  by  any  claim  of  a  patent, 
can  avert  a  charge  of  infringement  of  that  claim,48 
whether  or  not  the  equivalent  is  mentioned  in  the  patent.49 
But  like  substitution  of  something  which  is  not  an  equiva- 
lent, will  have  that  effect.50  The  doctrine  of  equivalents 
may  be  invoked  by  any  patentee,  whether  he  claimed 


46Bundy  Mfg.  Co.  v.  Detroit 
Time-Register  Co.,  94  F.  R.  538, 
1899;  Nathan  v.  Howard,  143 
F.  R.  889,  1906;  Lidgerwood  Mfg. 
Co.  v.  Lambert  Hoisting  Engine 
Co.,  150  F.  R.  364,  1906;  Weber 
v.  Automobile  &  Accessories  Mfg. 
Co.,  190  F.  R.  189,  1911;  Hall 
Mammoth  Incubator  Co.  v.  Tea- 
bout,  205  F.  R.  906,  1913;  Grupe 
Drier  &  Boiler  Co.  v.  Geiger, 
Fiske  &  Koop,  215  F.  R.  110, 
1914;  New  York  Scaffolding 
Co.  v.  Whitney,  224  F.  R.  452, 
1915. 

But  distinguished  from  Under- 
wood Typewriter  Co.  v.  Royal 
Typewriter  Co.,  224  F.  R.  477, 
where  after  the  omission  a  re- 
maining element  is  made  to  do 
double  work. 

47  Nathan  v.  Howard,  143  F.  R. 
889,  1906;  Kelsey  Heating  Co.  v. 
James  Spear  Stove,  etc.,  Co.,  155 
F.  R.  976,  1907;  Western  Tube 
Co.  v.  Rainer,  156  F.  R.  49,  1907; 


Kings  County  Raisin,  etc.,  Co.  v. 
U.  S.  Consolidated,  etc.,  Co.,  182 
F.  R.  59,  1910;  Hall  Mammoth 
Incubator  Co.  v.  Teabout,  205 
F.  R.  906,  1913;  Proudfit  Loose 
Leaf  Co.  v.  Kalamazoo  Loose 
Leaf  Binder  Co.,  230  F.  R.  120, 
1915;  Yancey  v.  Enright,  230 
F.  R.  641,  1916. 

48  O'Reilly  v.  Morse,  15  How- 
ard, 62, 1853;  Imhaeuser  v.  Buerk, 
101  U.  S.  655,  1879;  Reed  v. 
Chase,  25  F.  R.  94,  1885;  Amer- 
ican Box  Machine  Co.  v.  Day,  32 
F.  R.  585,  1887;  Ligowski  Clay- 
Pigeon  Co.  v.  Clay-Bird  Co.,  34 
F.  R.  331,  1888. 

49  Treibacher-Chemische  Werke, 
etc.,  Co.  v.  Roessler  &  Hasslacher 
Chemical  Co.,  219  F.  R.  210, 
1914. 

50  Railway  Co.  v.  Sayles,  97 
U.  S.  562,  1878;  Brown  v.  Puget 
Sound  Reduction  Co.,  110  F.  R. 
388,  1901. 


136  INFRINGEMENT  [CHAP.    XVI. 

equivalents  in  his  claim,51  or  described  any  in  his  specifi- 
cation,52 or  omitted  to  do  either  or  both  of  those  things. 
The  patentee,  having  described  his  invention  and  shown 
its  principles,  and  claimed  it  in  that  form  which  most 
perfectly  embodies  it,  is,  in  contemplation  of  law,  deemed 
to  claim  every  form  in  which  his  invention  may  be  copied, 
unless  he  manifests  an  intention  to  disclaim  some  of  these 
forms.53  Combination  patents  would  generally  be  value- 
less in  the  absence  of  a  right  to  equivalents,  for  few  com- 
binations now  exist,  or  can  hereafter  be  made,  which  do 
not  contain  at  least  one  element,  an  efficient  substitute 
for  which  could  readily  be  suggested  by  any  person  skilled 
in  the  particular  art.54  But  where  a  patentee  states  in 
his  specification  that  a  particular  part  of  his  invention 
is  to  be  constructed  of  a  particular  material,  and  states 
or  implies  that  he  does  not  contemplate  any  other  material 
as  being  suitable  for  the  purpose,  it  is  not  certain  that 
any  other  material  will  be  treated  by  a  court  as  an  equiva- 
lent of  the  one  recommended  in  the  patent ; 55  though  cellu- 
loid has  been  held  an  equivalent  of  metal,  in  one  well-con- 
sidered case  which  depended  upon  the  point.56 

§  352.  One  thing,   to  be  the  equivalent  of  another, 

"Dental     Vulcanite     Co.     v.  "Thrall  v.  Poole,  89  F.  R.  721, 

Davis,  102  U.  S.  229,  1880;  Hunt  1898. 

Bros.  Fruit  Packing  Co.  v.  Cas-  55  Aiken  v.  Bemis,  3  Woodbury 

sidy,   53  F.   R.   261,    1892;  Mc-  &   Minot,   348,    1847;   Harris   v. 

Cormick  Mack.  Co.  v.  Aultman,  Allen,  15  F.  R.  106,  1883;  Schil- 

69  F.  R.  393,  1895.  linger  v.  Cranford,  37  0.  G.  1349, 

52  Union  Metallic  Cartridge  Co.  1885;  Reece  Button-Hole  Mach. 

v.  United  States  Cartridge  Co.,  2  Co.  v.  Globe  Button-Hole  Mach. 

Bann.  &  Ard.  594, 1877;  Welsbach  Co.,  61  F.  R.  965,  1894;  Seabury 

Light  Co.  v.  Sunlight  Lamp  Co.,  v.  Johnson,  76  F.  R.  456,  1896. 

87  F.  R.  224,  1898.  »  Thrall  v.  Poole,  89  F.  R.  718, 

"Western  Electric  Co.  v.  La  1898. 
Rue,  139  U.  S.  606,  1891. 


CHAP.    XVI.]  INFRINGEMENT  437 

must  perform  the  same  functions  as  that  other.57  If  it 
performs  the  same  function,  the  fact  that  it  also  performs 
another  function  is  immaterial  to  any  question  of  infringe- 
ment.58 Therefore,  it  sometimes  happens  that  a  junior 
device  is  an  equivalent  of  a  senior  device  in  a  sense  that 
will  constitute  it  an  infringement  of  a  patent  for  the  latter; 
at  the  same  time  that  the  senior  device  is  not  an  equivalent 
of  the  junior  device  in  a  sense  that  will  cause  the  former 
to  negative  invention  or  novelty  in  the  latter.59  One 
thing  may  accordingly  be  an  equivalent  of  another,  though 
it  does  more  than  that  other,  but  it  cannot  be  such  an 
equivalent  if  it  does  less.60  But  the  test  of  function  is  only 
the  first  of  several  tests  of  equivalency.  The  fact  that  one 
thing  performs  the  same  function  as  another,  though 
necessary,  is  not  sufficient  to  make  it  an  equivalent 
thereof.61 

§  353.  Function  must  be  performed  in  substantially 
the  same  way  by  an  alleged  equivalent,  as  by  the  thing 

"Machine  Co.  v.  Murphy,  97  Accountant  Co.,  145  F.  R.  331, 

U.  S.  125, 1877;  Rowell  v.  Lindsay,  1906.    See  Section  376. 

113  U.  S.  103,  1884;  Roller  Mill  ™In  re  Hebard,  1  McArthur's 

Patent,  156  U.  S.  271,  1895;  Rail-  Patent  Cases,  550, 1857;  Loercher 

way  Mfg.  Co.  v.  Railroad  Co.,  30  v.  Crandall,  11  F.  R.  857,  1881; 

F.  R.  238,  1887;  Seeley  v.  Brush  Section  36  of  this  book;  Curry  v. 

Electric  Co.,  44  F.  R.  420,  1890;  Union  Electric  Welding  Co.,  230 

Farmers'  Mfg.  Co.  v.  Spruks  Mfg.  F.  R.  422,  1916. 

Co.,  119  F.  R.  599,  1902.  fl0  Bliss  v.  Haight,  3  Fisher,  626, 

58  Foss  v.  Herbert,  2  Fisher,  31,  1869;  Engle  Sanitary  &  Crema- 

1856;  Sarven  v.  Hall,  9  Blatch.  tion  Co.  v.  City  of  Elwood,  73 

524,  1872;  Wheeler  v.  Reaper  Co.,  F.  R.  486,  1896. 

10  Blatch.  195,  1872;  Kendrick  v.  61  Eames  v.  Godfrey,  1  Wallace, 

Emmons,  3  Bann.  &  Ard.  623,  78,  1863;  Westinghouse  v.  Boyden 

1878;  Norton  v.  California  Can  Power-Brake  Co.,  170  U.  S.  569, 

Co.,  45  F.  R.  638,  1891;  Masseth  1898;  Conover  v.  Roach,  4  Fisher, 

v.   Palm,    51   F.    R.   825,    1892;  12,   1857;  Merriam  v.  Drake,  5 

Comptograph  Co.  v.  Mechanical  Fisher,  259,  1872. 


438  INFRINGEMENT  [CHAP.    XVI. 

of  which  it  is  alleged  to  be  an  equivalent,  in  order  to  con- 
stitute it  such.62  This  substantial  sameness  of  way  is  not 
necessarily  an  identity  of  merit,63  nor  a  theoretical  scien- 
tific sameness.64  In  a  purely  scientific  sense,  a  screw  always 
performs  its  function  in  a  substantially  different  way  from 
a  lever,  and  in  substantially  the  same  way  as  a  wedge. 
Screws  and  wedges  are  equally  inclined  planes,  while  a 
lever  is  an  entirely  different  elementary  power.  But 
screws  and  levers  can  practically  be  substituted  for  each 
other  in  a  larger  number  of  machines  than  screws  and 
wedges  can  be  similarly  substituted.  When  a  lever  and  a 
screw  can  be  interchanged  and  still  perform  the  same 
function  with  a  result  that  is  beneficially  the  same,  they 
are  said  to  perform  the  same  function  in  substantially 
the  same  way.65  Levers  and  springs  are  also  used  inter- 
changeably in  the  arts,  and  constitute  another  example 
of  equivalency.66 

But  one  thing  may  be  an  equivalent  of  another  in  one 
environment,   and  not  such  an  equivalent  in  another 

62  Burr  v,  Duryee,   1  Wallace,  F.  R.  644,  1901;  Farmers'  Mfg. 

573,   1863;  Werner  v.  King,   96  Co.  v.  Spruks  Mfg.  Co.,  119  F.  R. 

U.  S.  230,  1877;  Dryfoos  v.  Wiese,  599,  1902. 

124  U.  S.  37,  1887;  Forncrook  v.  «» Brush  v.  Condit,   132  U.  S. 

Root,  127  U.  S.  181, 1887;  Sargent  49,  1889;  Roosevelt  v.  Telegraph 

v.  Burgess,   129  U.  S.   19,  1889;  Co.,  33  F.  R.  510,  1887;  Standard 

Sickles  v.  Borden,  3  Blatch.  535,  Folding  Bed  Co.  v.  Osgood,  58 

1856;  Peard  v.  Johnson,  23  F.  R.  F.  R.  584,  1893;  National  Bind- 

509,  1885;  Tonduer  v.  Chambers,  ing    Machine   Co.   v.   James   D. 

37  F.  R.  337,  1889;  Pacific  Cable  M'Laurin    Co.,    186    F.  R.  992, 

Railway  Co.  v.  Butte  City  Ry.  1911. 

Co.,  58  F.  R.  420,  1893;  Carter  «« Gordon  v.  Warder,  150  U.  S. 

Mach.  Co.  v.  Hanes,  70  F.  R.  865,  52,  1893. 

1895;  Engle  Sanitary  &  Crema-  «5Turrell  v.  Spaeth,  3  Bann.  & 

tion  Co.  v.  City  of  Elwood,  73  Ard.  458,  1878. 

F.  R.  486,  1896;  Pittsburg  Meter  «« Gould  Coupler  Co.  v.  Pratt, 

Co.  v.  Pittsburg  Supply  Co.,  109  70  F.  R.  627,  1895. 


CHAP.    XVI.]  INFRINGEMENT  439 

situation.67  Springs  and  weights  are  generally  equiva- 
lents; 68  but  where  the  environment  is  such  that  a  spring 
will  operate  successfully  while  a  weight  will  not  so  oper- 
ate, there  they  are  not  equivalents.69  While  in  most  cases 
a  mere  handle  is  not  an  equivalent  of  a  lever,  it  is  such  an 
equivalent  where  its  connections  are  such  that  it  performs 
the  same  function  in  substantially  the  same  way.70  But 
infringement  is  averted  by  using  a  hand,  instead  of  a  lever 
of  a  claimed  combination,  to  work  a  rod.71  However, 
in  one  case,  the  Supreme  Court  went  to  the  length  of 
deciding  a  confined  column  of  water  in  a  cylinder,  worked 
by  a  pump  and  working  a  piston,  to  be  an  equivalent  of  a 
combination  of  a  vibrating  arm,  toggle  joint,  and  other 
mechanical  devices,  when  used  to  transmit  vibratory 
power.72  This  decision  may  seem,  superficially,  to  be  in- 
consistent with  the  much  later  declaration  of  the  same 
court,  that  interchangeability  or  non-interchangeability, 
is  an  important  test  in  determining  the  question  of  in- 
fringement.73 That  view  has  already  been  recognized  by 
several  lower  courts,74  and  is  likely  to  persist.    But  in- 

67  Cochrane  v.  Deener,  94  U.  S.  72  Blake  v.  Robertson,  94  U.  S. 

789, 1876;  Hubel  v.  Dick,  28  F.  R.  732,  1876. 

136,  1886.  73  Miller  v.  Eagle  Co.,  151  U.  S. 

«8  Imhaeuser  v.  Buerk,  101  U.  S.  208,  1894. 

656,  1879;  American  Roll  Paper  7i  Campbell  Printing-Press  Co. 

Co.  v.  Weston,  45  F.  R.  692,  1891;  v.  Duplex  Printing-Press  Co.,  86 

Taws  v.  Laughlins,  70  F.  R.  108,  F.  R.  322,  1898;  Pittsburg  Meter 

1895.  Co.    v.    Pittsburg    Supply    Co., 

69  Cross  v.  Mackinnon,  11  F.  R.  109    F.    R.    651,    1901;    Crown 

601,  1882.  Cork   &    Seal    Co.    v.    Imperial 

'o  Corn-Planter  Patent,  23  Wal-  Bottle  Cap  Co.,  123  F.   R.  669, 

lace,  235,  1874;  Steam  Gauge  &  1903;  American  Pneumatic  Tool 

Lantern  Co.  v.  Mfg.  Co.,  28  F.  R.  Co.    v.    Philadelphia    Pneumatic 

619,  1886.  Tool     Co.,     123     F.     R.     896, 

?i  Brown  v.  Davis,  116  U.  S.  249,  1903. 
1885. 


I  10  INFRINGEMENT  [CHAP.    XVI. 

terchangeability  usually  requires  change  of  form,  in  order 
to  fit  the  thing  interchanged  to  its  new  environment. 
Therefore  it  appears  that  the  non-interchangeability 
referred  to  by  the  Supreme  Court  in  this  connection, 
involves  such  radical  unfitness  for  a  proposed  position 
and  function,  as  cannot  be  removed  by  any  change  of 
form.75  There  was  no  such  radical  unfitness  in  the  hy- 
draulic apparatus  involved  in  the  case  of  Robertson  v. 
Blake,  for  the  position  and  function  of  the  mechanical 
apparatus  for  which  it  was  substituted;  and  therefore 
there  is  no  inconsistency  between  that  case,  and  the  later 
cases  which  have  been  developing  the  doctrine  of  the  test 
of   interchangeability. 

§  354.  Whether  a  device,  in  order  to  be  an  equivalent 
of  another,  must  have  been  known  at  the  time  of  the 
invention  of  the  machine  which  contains  the  latter,  is  a 
question  which  was  elaborately  investigated  and  dis- 
cussed in  Sections  354  to  358  of  the  first  two  editions  of 
this  book;  because  it  appeared  to  be  not  only  important, 
but  also  unsettled.  But  the  weight  of  reason  was  always 
much  on  the  side  of  the  negative  of  that  question;  and  the 
weight  of  authority  has  now  accumulated  so  preponderat- 
ingly  upon  the  same  side,  that  the  question  may  now  be 
held  to  be  settled  in  the  negative.76    An  apparent  excep- 

75  Alaska  Packers'   Association  U.  S.  695,  1885;  Sickles  v.  Borden, 

v.  Letson,  119  F.  R.  611,  1902.  3  Blatch.  535,   1856;  Cahoon  v. 

'«  O'Reilly  v.  Morse,  15  Howard,  Ring,  1  Cliff.  620,  1861;  Roberts 
123,  1853;  Burr  v.  Duryee,  1  Wal-  v.  Harnden,  2  Cliff.  506,  1865; 
lace,  573,  1863;  Mason  z\  Graham,  Graham  v.  Mason,  5  Fisher,  11, 
23  Wallace,  275,  1874;  Cochrane  1869;  Harwood  v.  Mfg.  Co.,  3 
v.  Deener,  94  U.  S.  780,  1876;  Fisher,  530,  1869;  Vogler  v. 
Union  Paper  Bag  Machine  Co.  v.  Semple,  7  Bissell,  382,  1877;  Pot- 
Murphy,  97  U.  S.  125,  1877;  ter  v.  Stewart,  18  Blatch.  563, 
Clough  v.  Mfg.  Co.,  106  U.  S.  178,  1881;  Evory  v.  Burt,  15  F.  R. 
1882;    Cantrell    v.    Wallick,    117  112,  1883;  United  Nickel  Co.  v. 


CHAP.    XVI.] 


INFRINGEMENT 


441 


tion  has  been  made  by  one  court  which  held  a  material 
which  the  patentee  had  tried  unsuccessfully  to  use  as  an 
element  of  his  combination  but  which  was  later  success- 
fully used  by  another  cannot  be  an  equivalent  of  the 
material  actually  described  in  the  patent.77  It  is  there- 
fore safe  to  define  an  equivalent  as  a  thing  which  performs 
the  same  function,  and  performs  that  function  in  sub- 
stantially the  same  manner,  as  the  thing  of  which  it  k? 
alleged  to  be  an  equivalent. 

§  359.  Primary  inventions  are  entitled  to  a  somewhat 
looser  application  of  this  definition  of  an  equivalent  than 
those  inventions  which  are  secondary.78  But  a  patentee 
is  not  to  be  denied  the  benefit  of  the  doctrine  of  equiv- 


Pendleton,  15  F.  R.  745,  1883; 
Murphy  v.  Trenton  Rubber  Co., 
45  F.  R.  570,  1891;  Norton  v. 
California  Can  Co.,  45  F.  R.  638, 
1891;  Jones  Co.  v.  Munger  Co.,  49 
F.  R.  67,  1891;  National  Cash 
Register  Co.  v.  American  Cash 
Register  Co.,  53  F.  R.  373,  1893; 
Merrow  v.  Shoemaker,  59  F.  R. 
128,  1893;  Beach  v.  Box  Mach. 
Co.,  63  F.  R.  606,  1894;  Edison 
Electric  Light  Co.  v.  Boston 
Lamp  Co.,  62  F.  R.  399,  1894; 
Stahl  v.  Williams,  64  F.  R.  124, 
1894;  McCormick  Harvesting 
Mach.  Co.  v.  Aultman,  69  F.  R. 
386,  1895;  Gould  Coupler  Co.  v. 
Pratt,  70  F.  R.  627,  1895;  Read 
Holliday  &  Sons  v.  Schulze-Berge, 
78  F.  R.  496,  1896;  Kinloch  Tel. 
Co.  v.  Western  Electric  Co.,  113 
F.  R.  652,  1902. 
77  Folger  &   Moriarty  v.   Dow 


Portable  Electric  Co.,  128  F.  P. 
45,  1904. 

78  Miller  v.  Eagle  Co.,  151  U.  S. 
207,  1894;  Westinghouse  v.  Boy- 
den  Power-Brake  Co.,  170  U.  S. 
562,  1898;  Dederick  v.  Seigmund, 
51  F.  R,  235,  1892;  Welsbach 
Light  Co.  v.  Sunlight  Lamp  Co., 
87  F.  R.  224,  1898;  National  Cash 
Register  Co.  v.  Leland,  94  F.  R. 
513,  1899;  Bundy  Mfg.  Co.  v. 
Detroit  Time  Register  Co.,  94 
F.  R.  540,  1899;  McBride  v. 
Kingman,  97  F.  R.  219,  1899; 
William  Mann  Co.  v.  Hoffmann, 
104  F.  R.  254,  1900;  Rich  v. 
Baldwin  Tuthill  &  Bolton,  133 
F.  R.  920,  1904;  Brothers  v. 
Lidgerwood  Mfg.  Co.,  223  F.  R. 
359,  1915;  Cimiotti  Unhairing  Co. 
v.  American  Fur  Refining  Co.,  198 
U.  S.  399,  1905;  Computing  Scale 
Co.  v.  Automatic  Scale  Co.,  204 
U.  S.  609,  1907. 


442 


INFRINGEMENT 


[chap.  XVI. 


alents  to  the  extent  necessary  to  protect  his  actual  in- 
vention, although  the  invention  may  be  a  narrow  one.79 
A  fair  statement  of  the  rule  is  that  "the  range  of 
equivalents  covered  by  the  patent  corresponds  with 
the  character  of  the  invention,  and  includes  all  forms 
which  embody  the  substance  of  the  invention,  and  by 
like  mechanical  co-operation  effect  substantially  the  same 
result."  80  Another  very  clear  statement  of  the  correct  rule 
is  found  in  the  case  of  Mallon  v.  Gregg  &  Co.81  Other  sub- 
stantially similar  expressions  of  the  rule  are  found  in  the 
reported  cases.82  In  Cimiotti  Unhairing  Co.  v.  American 
Fur  Refining  Co.83  the  Supreme  Court  made  the  very  con- 
fusing statement  that  "where  the  patent  does  not  embody 


79  Levy  v.  Harris,  124  F.  R.  69, 
1903. 

80  Dowagiac  Mfg.  Co.  v .  Bren- 
nan  &  Co.,  127  F.  R.  143,  1903. 

81  Mallon  v.  Gregg  &  Co.,  137 
F.  R.  68,  1905. 

82  Sloan  Filter  Co.  v.  Portland 
Gold  Mining  Co.,  139  F.  R.  23, 
1905;  Columbia  Wire  Co.  v. 
Kokomo  Steel  &  Wire  Co.,  143 
F.  R.  116,  1905;  Union  Match 
Co.  v.  Diamond  Match  Co.,  162 
F.  R.  148,  1908;  Lewis  Blind 
Stitch  Machine  Co.  v.  Premium 
Mfg.  Co.,  163  F.  R.  950,  1908; 
Veneer  Machinery  Co.  v.  Grand 
Rapids  Chair  Co.,  227  F.  R. 
419,  1915. 

An  apparently  contrary  doc- 
trine is  announced  in  some  cases 
as,  for  instance:  Cumming  v. 
Baker  &  Hamilton,  144  F.  R.  395, 
1906,  where  the  statement  is  made 
that  in  improvement  patents  "the 


patentee  is  limited  to  the  precise 
devices  and  combinations  shown 
and  claimed  in  his  patent."  If 
this  and  similar  expressions  mean 
literally  what  they  say,  it  is  sug- 
gested that  the  doctrine  has  little 
support  either  in  logic  or  author- 
ity. 

Other  cases  where  expressions 
of  the  various  doctrines  are  found 
are:  St  Louis  Street,  etc.,  Co.  v. 
Am.  Street,  etc.,  Co.,  156  F.  R. 
574,  1907;  Hardison  v.  Brinkman, 
156  F.  R.  962,  1907;  W.  W.  Sly 
Mfg.  Co.  v.  Russell  &  Co.  (con- 
taining discussion  of  rule  in  Sixth 
Circuit)  189  F.  R.  61, 1911;  Grand 
Rapids  Show  Case  Co.  v.  Baker, 
216  F.  R.  341,  1914;  Yancey 
v.  Enright,  230  F.  R,  641, 
1916. 

83  Cimiotti  Unhairing  Co.  v. 
American  Fur  Refining  Co.,  19S 
U.  S.  399,  1905. 


CHAP.    XVI. J  INFRINGEMENT  443 

a  primary  invention,  but  only  an  improvement  on  the 
prior  art,  and  if  defendant's  machines  can  be  differentiated 
the  charge  of  infringement  is  not  sustained,"  a  statement 
which  was  substantially  repeated  in  Computing  Scale  Co. 
v.  Automatic  Scale  Co.84  The  doubt,  however,  was  cleared 
up  in  the  case  of  Continental  Paper  Bag  Company  v. 
Eastern  Paper  Bag  Company,85  where  it  was  said,  refer- 
ring to  the  Cimiotti  case  and  the  Computing  Scale  Co. 
case:  "It  is  manifest,  therefore,  that  it  was  not  meant  to 
decide  that  only  pioneer  patents  are  entitled  to  invoke 
the  doctrine  of  equivalents,  but  that  it  was  decided  that 
the  range  of  equivalents  depends  upon  and  varies  with 
the  degree  of  invention."  The  latter  proposition  is  there- 
fore finally  definitely  settled  as  the  law  to  be  applied  in 
determining  the  range  of  equivalents  to  which  an  inventor 
is  entitled.  In  view  of  the  "Paper  Bag  Patent  Case," 
therefore,  those  who  claim  a  proper  range  of  equivalents 
in  a  secondary  or  narrow  patent  should  not  be  alarmed  by 
the  statement  in  the  later  case  of  Diamond  Rubber  Co. 
v.  Consolidated  Rubber  Co.86  that  a  patent  that  is  a  "step 
only  in  the  march  of  improvement"  is  "  limited  therefore 
to  its  precise  form  and  elements." 

A  primary  invention  is  one  which  performs  a  function 
never  performed  by  any  earlier  invention ; 87  while  a  second- 
ary invention  is  one  which  performs  a  function  previously 

84  Computing  Scale  Co.  v.  Auto-  caster,  129  U.  S.  273,  1889;  Cel- 
matic  Scale  Co.,  204  U.  S.  609,  luloid  Mfg.  Co.  v.  Arlington  Mfg. 
1907.  Co.,  44  F.  R.  86,  1890;  Norton  v. 

85  Continental  Paper  Bag  Com-  Jensen,  49  F.  R.  862,  1892;  Na- 
pany  v.  Eastern  Paper  Bag  Com-  tional  Cash  Register  Co.  v.  Amer- 
pany,  210  U.  S.  405,  1908.  ican  Cash  Register  Co.,  53  F.  R. 

86  Diamond  Rubber  Co.  v.  Con-  372,  1892;  Boston  Lasting  Mach. 
solidated  Tire  Co.,  220  U.  S.  428,  Co.  v.  Woodward,  53  F.  R.  481, 
1911.  1893. 

87  Morley  Machine  Co.  v.  Lan- 


lil  INFRINGEMENT  [('HAP.    XVI. 

performed  by  some  earlier  invention,  but  which  performs 
that  function  in  a  substantially  different  way  from  any  that 
preceded  it.88  The  six  leading  Supreme  Court  cases,  which 
have  attended  to  the  distinction  now  under  treatment, 
attended  thereto  in  the  following  terms. 

In  the  first  of  these  cases  the  court  said :  "If  the  patentee 
be  the  original  inventor  of  the  device  or  machine  called 
the  divider,  he  will  have  a  right  to  treat  as  infringers  all 
who  make  dividers  operating  on  the  same  principle,  and 
performing  the  same  functions,  by  analogous  means  or 
equivalent  combinations,  even  though  the  infringing  ma- 
chine may  be  an  improvement  of  the  original,  and  patent- 
able as  such.  But  if  the  invention  claimed  be  itself  but 
an  improvement  on  a  known  machine  by  a  mere  change 
of  form  or  combination  of  parts,  the  patentee  cannot 
treat  another  as  an  infringer  who  has  improved  the  origi- 
nal machine  by  use  of  a  different  form  or  combination 
performing  the  same  functions.  The  inventor  of  the  first 
improvement  cannot  invoke  the  doctrine  of  equivalents 
to  suppress  all  other  improvements  which  are  not  mere 
colorable  invasions  of  the  first."  89 

In  the  second  of  these  cases  the  court  said:  "In  such 
cases,  if  one  inventor  precedes  all  the  rest,  and  strikes  out 
something  which  includes  and  underlies  all  that  they  pro- 
duce, he  acquires  a  monopoly,  and  subjects  them  to  trib- 
ute. But  if  the  advance  toward  the  thing  desired  is  grad- 
ual, and  proceeds  step  by  step,  so  that  no  one  can  claim 
the  complete  whole,  then  each  is  entitled  only  to  the  spe- 
cific form  of  device  which  he  produces,  and  every  other 

88Butz  Thermo-Electric  Co.  v.  Howard,  405,  1857;  also  Wesel  v. 

Electric  Co.,  36  F.  R.  192,  1888;  United  Mattress  Mach.  Co.,  139 

Writing  Mach.  Co.  v.  Book  Type-  F.  R.  11,  1905;  Central  Foundry 

writer  Co.,  108  F.  R.  629,  1901.  Co.  v.  Coughlin,   141  F.   R.  91, 

89McCormick    v.    Talcott,    20  1905. 


CHAP.    XVI. |  INFRINGEMENT  44.") 

inventor  is  entitled  to  his  own  specific  form,  so  long  as 
it  differs  from  those  of  his  competitors,  and  does  not 
include  theirs.90 

In  the  third  of  these  cases  the  court  said:  "Where  an 
invention  is  one  of  a  primary  character,  and  the  mechani- 
cal functions  performed  by  the  machine  are,  as  a  whole, 
entirely  new,  all  subsequent  machines  which  employ 
substantially  the  same  means  to  accomplish  the  same 
result,  are  infringements,  although  the  subsequent  machine 
may  contain  improvements  hi  the  separate  mechanisms 
which  go  to  make  up  the  machine."  And  the  court  also 
said  that  secondary  patents  ought  to  receive  a  narrower 
construction  than  this.91 

In  the  fourth  of  these  cases,  the  Supreme  Court  con- 
curred with  the  Circuit  Court,  and  the  Circuit  Court  of 
Appeals,  in  holding  that  the  question  of  infringement 
depended  upon  the  question  whether  the  patents  in  suit 
were  primary  or  were  secondary.  The  Circuit  Court 
had  held  them  to  be  secondary,  and  had  found  non- 
infringement. The  Circuit  Court  of  Appeals  had  held 
one  of  the  four  patents  in  suit  to  be  prhnary,  and  had  found 
it  to  be  infringed  by  the  defendant's  machine.  The 
Supreme  Court  concurred  with  the  Circuit  Court  on 
this  issue  of  fact,  and  found  non-infringement  ac- 
cordingly.92 

In  the  fifth  of  these  cases  the  court  said:  "It  is  well 
settled  that  a  greater  degree  of  liberality  and  a  wider 
range  of  equivalents  are  permitted  where  the  patent 
is  of  a  pioneer  character  than  where  the  invention  is  simply 
an  improvement,  may  be  the  last  and  successful  step, 

90  Railway  Co.  v.  Sayles,  97  92Kokomo  Fence  Mach.  Co. 
U.  S.  556,  1878.  v.     Kitselman,     189     U.     S.     8, 

91  Morley  Machine  Co.  v.  Lan-  1903. 
caster,  129  U.  S.  273,  1889. 


440  INFRINGEMENT  [CHAP.    XVI. 

in  the  art  theretofore  partially  developed  by  other  in- 
ventors in  the  same  field."93 

The  sixth  of  these  cases  was  that  of  Continental  Paper 
Bag  Co.  v.  Eastern  Paper  Bag  Co.,  and  as  shown  in  the 
first  part  of  this  section  definitely  settled  the  law  to  be 
that  an  inventor  is  entitled  to  a  range  of  equivalents 
commensurate  with  the  scope  of  his  invention.  Thus 
the  old  distinction  between  primary  and  secondary  pat- 
ents in  respect  to  range  of  equivalents,  if  such  distinction 
ever  really  existed,  has  been  eradicated. 

§  362.  The  four  leading  cases  and  other  cases  on  this 
subject,94  teach  general  doctrines  rather  than  precise 
rules;  and  those  general  doctrines  may  be  concisely  stated 
as  follows: 

There  are  two  tests  of  equivalency.  1.  Identity  of 
function.  2.  Substantial  identity  of  way  of  performing 
that  function.95  Primary  as  well  as  secondary  patents  are 
infringed  by  no  substitutions  that  do  not  fully  respond 
to  the  first  of  these  tests.  The  second  of  these  tests  is 
somewhat  elastic,  because  it  contains  the  word  "  sub- 
stantial." That  word  is  allowed  to  condone  more  and 
more  important  differences  in  the  case  of  a  primary  pat- 
ent, than  in  the  case  of  a  secondary  one.96    In  the  case  of 

93  Cimiotto  Unhairing  Co.  v.  v.  Electric  Co.,  36  F.  R.  195,  1888; 
American  Fur  Refining  Co.,  198  Harmon  v.  Struthers,  43  F.  R.  443, 
U.  S.  399,  1905.  1890;  National  Typographic  Co.  v. 

94  Pope  Mfg.  Co.  v.  Gormully  New  York  Typograph  Co.,  46 
Mfg.  Co.,  144  U.  S.  242, 1892;  Ses-  F.  R.  116,  1891;  New  Departure 
sions  v.  Romadka,  145  U.  S.  45,  Bell  Co.  v.  Bevin  Mfg.  Co.,  64 
1892;  Knapp  v.  Morss,  150  U.  S.  F.  R.  864,  1894;  Read  Machine 
230,  1893 ;  Miller  v.  Eagle  Co.,  151  Co.  v.  Jaburg,  221  F.  R.  662, 1915. 
U.  S.  204,  1894.  96  Miller  v.  Eagle  Co.,  151  U.  S. 

95  Steam  Gauge  &  Lantern  Co.  207, 1894;  McCormick  Harvesting 
v.  Rogers,  29  F.  R.  453,  1886;  Mach.  Co.  v.  Aultman,  69  F.  R. 
Clark  v.  Wilson,  30  F.  R.  373,  393,  1895;  Welsbach  Light  Co.  v. 
1887;  Butz  Thermo-Electric  Co.  Sunlight  Lamp  Co.,  87  F.  R.  224, 


CHAP.    XVI.] 


INFRINGEMENT 


447 


a  patent  narrowed  in  construction  by  an  extensive  state 
of  the  preceding  art,  the  word  "  substantial "  will  give 
but  little  elasticity  to  the  application  of  the  doctrine.97 
If  fewer  inventions  preceded  the  one  at  Jbar,  the  word 
will  have  somewhat  more  of  carrying  power.98  When 
the  invention  at  bar  is  strictly  primary,  and  especially 
if  it  is  extremely  useful,  then  the  word  " substantial" 
will  be  made  to  cover  differences  alike  numerous  and 
important,  and  even  highly  creditable  to  the  infringer  who 
invented  them.99 


1898;  Eldred  v.  Kessler,  106  F.  R. 
517,.  1900;  National  Hollow 
Brake-Beam  Co.  v.  Interchange- 
able Brake-Beam  Co.,  106  F.  R. 
710,  1901 ;  Western  Electric  Co.  v. 
Williams-Abbott  Electric  Co.,  108 
F.  R.  955,  1901;  Adams  Co.  v. 
Schreiber  &  Conchar  Mfg.  Co., 
Ill  F.  R.  186,  1901;  Adam  v.  Fol- 
ger,  120  F.  R.  263,  1903;  Carnegie 
Steel  Co.  v.  Brislin,  124  F.  R. 
220,  1903. 

97  Duff  v.  Pump  Co.,  107  U.  S. 
639,  1882;  Knapp  v.  Moras,  150 
U.  S.  230,  1893;  Boyd  v.  Janesville 
Hay  Tool  Co.,  158  U.  S.  267, 1895; 
Dashiell  v.  Grosvenor,  162  U.  S. 
432,  1896;  Dederick  v.  Seigmund, 
51  F.  R.  235, 1892;  Standard  Fold- 
ing Bed  Co.  v.  Osgood,  51  F.  R. 
678,  1892;  Joslin  v.  Northern 
Pacific  Ry.  Co.,  55  F.  R.  68,  1893; 
Bundy  Mfg.  Co.  v.  Time  Recorder 
Co.,  64  F.  R.  853,  1894;  Schuyler 
Electric  Co.  v.  Electric  Supply 
Co.,  66  F.  R.  315,  1895. 

98  Reminder  Lock  Co.  v.  Adler, 
71  F.  R.  185,  1895;  Boston  &  R. 


Electric  St.  Ry.  Co.  v.  Bemis  Car 
Box  Co.,  80  F.  R.  287,  1897;  Pen- 
field  v.  Chambers  Bros.  Co.,  92 
F.  R.  649,  1899;  Brammer  v. 
Schroeder,  106  F.  R.  920,  1901; 
Writing  Mach.  Co.  v.  Book-Type- 
writer Co.,  108  F.  R.  629,  1901 ; 
Dowagiac  Mfg.  Co.  v.  Minnesota 
Moline  Plow  Co.,  118  F.  R.  141, 
1902;  Lamson  Consolidated  Store 
Service  Co.  v.  Hillman,  123  F.  R. 
423,  1903. 

"The  Telephone  Cases,  126 
U.  S.  537,  1888;  American  Bell 
Telephone  Co.  v.  Spencer,  8  F.  R. 
509,  1881;  American  Bell  Tel- 
ephone Co.  v.  Dolbear,  15  F.  R. 
488,  1883;  Hubel  v.  Dick,  28  F.  R. 
136,  1886;  Brush  Electric  Co.  v. 
Ft.  Wayne  Electric  Co.,  40  F.  R. 
833,  1889;  Rapid  Store  Service 
Ry.  Co.  v.  Taylor,  43  F.  R.  256, 
1887;  Harmon  v.  Struthers,  43 
F.  R.  443,  1890;  Brush  Electric 
Co.  v.  Electric  Co.,  43  F.  R.  541, 
1890;  Brush  Electric  Co.  v.  Elec- 
tric Imp.  Co.,  52  F.  R.  977,  1892; 
Xational    Cash    Register   Co.    v. 


I  Is  [NPRINGEMENT  [CHAP.    XVI. 

The  rule  has  also  been  laid  down  that  even  though  an 
invention  is  not  generic,  if  it  is  one  of  exceptional  merit, 
it  is  entitled  to  a  liberal  construction  and  a  fair  range  of 
equivalents.  10° 

§  3G2a.  The  broad  statement  is  frequentty  made  that 
the  grant  of  a  subsequent  patent  raises  a  legal  presump- 
tion of  patentable  difference  from  an  earlier  invention.101 
And  the  doctrine  finds  apparent  support  in  the  Supreme 
Court  case  of  Kokomo  Fence  Machine  Co.  v.  Kitselman.102 
Such  a  general  rule,  however,  ignores  the  distinction 
between  improvements  over  prior  structures  and  inven- 
tions of  a  different  species.103  As  said  in  Electric  Candy 
Machine  Co.  v.  Morris:104 

"But  it  is  claimed  that  the  Kochs  patent  raises  a  prima 
facie  presumption  that  there  is  a  patentable  difference 
between  defendant's  machine  and  complainant's  machine. 
But  this  presumption  does  not  exclude  the  fact  that  the 

American  Cash  Register  Co.,  53  house  Electric  &  Mfg.  Co.,   191 

F.  R.  372, 1892;  Mergenthaler  Co.  F.   R.  350  (8th    Circuit),   1911; 

v.  Press  Pub.  Co.,  57  F.  R.  505,  General    Electric    Co.    v.    Allis- 

1893;  Reece  Button-Hole  Mach.  Chalmers    Co.,    197    F.    R.    558 

Co.  v.  Globe  Button-Hole  Mach.  (N.    J.),    1912;    Gillette    Safety 

Co.,  61  F.  R.  964,  1894;  Bowers  v.  Razor    Co.   v.    Durham    Duplex 

Von  Schmidt,  63  F.  R.  580,  1894;  Razor  Co.,  197  F.  R.  574,  1912; 

Beach  v.  Box  Mach.  Co.,  63  F.  R.  Crowe  v.  Oscar  Barnett  Foundry 

606,  1894;  Rogers  Typograph  Co.  Co.,  206  F.  R.  164,  1913;  Simplex 

v.  Mergenthaler  Co.,  64  F.  R.  803,  Electric  Heating  Co.  v.  Leonard, 

1894;    Bredin    v.    Solmson,    132  180  F.  R.  763,  1910. 

F.  R.  161,  1904.  102  Kokomo  Fence  Machine  Co. 

100  Benbow-Brammer  Mfg.  Co.  v.  Kitselman,  189  U.  S.  8, 
v.  Straus,  166  F.  R.  114,  1908;  1903. 

Hagan  v.  Swindell,  204  F.  R.  442,  ™  Miller   v.   Eagle   Mfg.   Co., 

1913.  151  U.  S.   186,   1894. 

101  Milwaukee   Carving   Co.   v.         See  Section  184. 
Brunswick-Balke-Collender      Co.  104  Electric  Candy  Machine  Co. 
(9th  Circuit),  126  F.  R.  171,  1903;  v.  Morris,  156  F.  R.  972  (Mo.), 
Century  Electric  Co.  v.  Westing-  1905. 


CHAP.    XVI.]  INFRINGEMENT  449 

later  patent  may  embody  things  which  are  the  exclusive 
property  of  the  complainant  under  a  prior  patent.  In 
other  words,  it  may  be  that  Kochs'  patent  contains  im- 
provements which  this  complainant  cannot  use,  but  it 
does  not  follow  that  therefore  Kochs'  patent  also  absorbs 
improvements  theretofore  invented  by  and  patented  to 
complainant's  assignors.  If,  therefore,  as  the  court  has 
found,  defendant's  machine  infringed  on  certain  essential 
features  of  complainant's  machine,  the  mere  fact  that  it 
is  constructed  in  accordance  with  a  subsequent  patent 
issued  to  another  party  is  no  defense." 

In  the  Kokomo  case  it  will  be  noted  that  the  court  had 
before  it  two  patents  both  of  which  were  improvements 
on  the  prior  art  and  it  was  said  that  "the  presumption 
from  the  grant  of  the  letters  patent  is  that  there  was  a 
substantial  difference  between  the  inventions."  As- there 
may  be  and  in  fact  are,  in  the  cases  of  a  multitude  of 
patents,  improvements  upon  improvements  as  well  as 
improvements  of  different  species  it  must  be  admitted 
that  the  Kokomo  case  lends  considerable  judicial  support 
to  the  doctrine,  unless  the  court  meant  by  the  phrase 
"substantial  difference"  a  difference  in  species.  If, 
however,  the  court  meant,  as  is  said  in  substance  in  Au- 
topiano  Co.  v.  Amphion  Piano  Player  Co.,105  that  the 
presumption  arises  only  when  one  patent  is  not  an  im- 
provement upon  the  other,  the  doctrine  as  thus  modi- 
fied would  seem  to  be  a  reasonable  application  of  the 
rule  of  presumption  attaching  to  the  issuance  of  a 
patent. 

In  view  of  the  fact  that  the  great  bulk  of  patents  issued 
are  for  improvements  over  the  structures  of  prior  patents 
the  doctrine  of  the  Autopiano  case  would  seem  to  be  sub- 

103  Audopiano  Co.  v.  Amphion  Piano  Player  Co.,  186  F.  R.  159 
(Second  Circuit),  1911. 


150  INFRINGEMENT  [CHAP.    XVI. 

stantiated  by  actual  facts.  Further,  it  seems  to  be  sus- 
fcained  by  the  weight  of  authority. ]0f>  Of  course  if  subordi- 
nation to  the  patent  in  suit  is  expressly  recognized  in  the 
subsequent  patent  no  such  presumption  could  be  raised 
in  any  jurisdiction.1"7  One  court  has  said  that  if  the  Com- 
missioner of  Patents  has  held  that  no  interference  exists 
between  the  two  patents  the  presumption  is  overcome.108 
Here  again  the  same  consideration  exists  that  the  subse- 
quent patent  may  be  merely  an  improvement  over  the 
prior  patent  and  if  such  be  the  case  and  the  claims  be  con- 
fined to  the  actual  invention,  the  Commissioner  would 
not  declare  that  an  interference  existed.  Another  court 
has  held  that  when  the  prior  patent  is  for  a  primary  inven- 
tion the  presumption  that  the  later  patent  is  for  an  im- 
provement on  the  former  is  at  least  as  strong  as  the  pre- 
sumption of  the  rule  that  the  later  patent  is  not  an 
infringement,109  with  the  result  apparently  that  in  such  a 
case  there  is  no  presumption  at  all.  The  arguments  for 
and  against  the  doctrine  in  question  and  the  modifications 
of  it  are  well  set  forth  in  the  case  of  Herman  v.  Youngstown 
Car  Mfg.  Co.110  where  the  Circuit  Court  of  Appeals  of 
the  sixth  circuit  said: 

"Defendant's  device  is  manufactured  under  patent 
No.  765,406,  issued  July  19,  1904,  to  J.  H.  Wagenhorst, 
and  the  court  below  gave  to  this  fact  some  force  in  reach- 
ing his  conclusion  that  the  device  did  not  infringe.  We 
think  that  the  granting  of  the  later  patent  and  defendant's 

106  Ries  v.  Barth  Mfg.  Co.,  136  108  Century  Electric  Co.  v.  West- 

F.    R.   850    (7th   Circuit),  1905;  inghouse   Electric   &   Mfg.    Co., 

Cutler-Hammer  Mfg.  Co.  v.  Union  191  F.  R.  350,  1911. 

Electric  Mfg.  Co.,  147  F.  R.  266  109  Century  Electric  Co.  v.  West- 

(Wisconsin),  1906.  inghouse  Electric  &  Mfg.  Co.,  191 

!°7  Columbia  Wire  Co.  v.  Ko-  F.  R.  350,  1911. 

komo  Steel  &  Wire  Co.,  143  F.  R.  no  Herman  v.  Youngstown  Car 

116  (2nd  Circuit),  1905.  Mfg.  Co.,  191  F.  R.  579,  1911. 


CHAP.    XVI.]  INFRINGEMENT  1.'>1 

conformity  thereto  are  not  of  importance  in  this  case,  on 
the  infringement  issue.  There  are  expressions  in  some 
reported  cases  implying  that  by  the  later  patent  the  govern- 
ment has  granted  a  right  to  make  and  use  the  article  so 
patented,  and  that  such  grant  is  inconsistent  with  any 
construction  of  the  earlier  patent  which  would  forbid  the 
manufacture  of  the  later  structure.  Such  implication 
rests  on  a  fundamental  error.  A  patent  is  not  the  grant 
of  a  right  to  make  or  use  or  sell.  It  does  not,  directly 
or  indirectly,  imply  any  such  right.  It  grants  only  the 
right  to  exclude  others.  The  supposition  that  a  right  to 
make  is  created  by  the  patent  grant  is  obviously  incon- 
sistent with  the  established  distinctions  between  generic 
and  specific  patents,  and  with  the  well-known  fact  that  a 
very  considerable  portion  of  the  patents  granted  are  in  a 
field  covered  by  a  former  relatively  generic  or  basic  pat- 
ent, are  tributary  to  such  earlier  patent,  and  cannot  be 
practiced  unless  by  license  thereunder. 

"Another  reason  sometimes  advanced  for  supposing 
that  the  structure  of  the  second  does  not  infringe  the  claim 
of  the  first  patent  is  that  the  Patent  Office  has  declared 
that  a  patentable  difference  exists.  The  premise  is  sound, 
but  not  the  conclusion.  In  examining  the  second  applica- 
tion, the  Patent  Office  has  no  concern  with  the  scope  of 
the  claim  of  the  first,  and  does  not  and  must  not  pay  any 
attention  thereto.  It  is  concerned  only  with  the  early 
disclosure  by  the  specification  and  drawings.  Patentable 
difference  does  not  of  itself  tend  to  negative  infringement. 
It  may  just  as  well  be  based  upon  infringement,  plus  im- 
provement; an  improvement  may  lie  in  addition,  simplifi- 
cation, or  variance.  This  is  well  illustrated  by  this  Wagen- 
horst  patent.  The  drawings  show,  and  the  specifications 
describe,  a  structure  generally  similar  to  Herman's,  but 
each  one  of  the  10  claims  is  found  to  be  confined  to  some 


152  INFRINGEMENT  [CHAP.    XVI. 

modification  and  supposed  improvement  added  to  the 
underlying  combinations  of  the  earlier  art. 

"  As  the  necessary  result  of  the  fundamental  principles, 
it  seems  that  the  existence  of  the  later  patent  can  have  no 
tendency  to  disprove  infringement,  unless,  for  other 
reasons,  we  have  first  reached  the  conclusion  that  the  ear- 
lier pat ei it  is,  as  to  the  later  structure,  specific,  and  not 
generic.  If  we  have  reached  that  conclusion,  and  the  cor- 
relative conclusion  that  the  earlier  patent  is  entitled  only 
to  a  narrow  range  of  equivalents,  and  if  we  find  that  the 
claims  of  the  later  patent  embody  no  improvement  fea- 
ture whatever,  we  will  then  find  our  conclusion  fortified 
by  the  Patent  Office  declaration  that  the  two  structures 
are  different  species  of  the  same  genus;  but  before  we  can 
so  interpret  the  Patent  Office  action,  we  must  have  given 
to  the  earlier  patent  a  construction  which  will  of  itself 
probably  determine  the  question  of  infringement,  and  it 
is  difficult  to  see  how  in  deciding  the  underlying  question 
material  aid  can  be  had  from  such  Patent  Office  declara- 
tion. 

"  We  find  no  authoritative  decisions  which  go  beyond  the 
limits  we  have  indicated.  Corning  v.  Burden,  15  How. 
252,  270,  14  L.  Ed.  683,  seems  to  be  the  basis  of  the  later 
rulings.  Its  language  is  general.  The  report  does  not 
show  the  two  patents  fully  enough  to  indicate  any  incon- 
sistency with  the  ideas  we  have  f ormulated ;  and  the  opin- 
ion antedates  the  Patent  Office  practice  in  force  while  all 
now  existing  patents  were  issued.  Blanchard  v.  Putnam, 
8  Wall.  420,  19  L.  Ed.  tends  to  limit,  if  not  overrule, 
Corning  v.  Burden.  The  remark  of  Mr.  Justice  Jackson 
in  Miller  v.  Eagle  Co.,  151  U.  S.  186,  208,  14  Sup.  Ct.  310, 
38  L.  Ed.  121,  refers  to  patentable  difference,  not  to  non- 
infringement, and  the  case  to  which  he  refers  (Duff  v. 
Sterling,  107  U.  S.  636,  2  Sup.  Ct.  487,  27  L.  Ed.  517)  did 


CHAP.    XVI.]  INFRINGEMENT  453 

not  involve  the  evidential  force  of  the  junior  patent.  In 
Boyd  v.  Janesville,  etc.,  Co.,  158  U.  S.  260,  15  Sup.  Ct. 
837,  39  L.  Ed.  973,  the  court  reaches  the  conclusion  that 
the  Boyd  patent  is  specific,  and  then,  in  referring  to  de- 
fendant's patent,  considers  the  structural  differences 
which  put  the  two  patents  in  two  specific  classes.  The 
sentence  quoted  with  apparent  approval  from  Pavement 
Co.  v.  City  of  Elizabeth,  4  Fish.  189,  Fed.  Cas.  No.  312, 
was  appropriate  to  that  case,  but,  if  applied  generally, 
would  overlook  the  distinction  between  patentable  differ- 
ence and  non-infringement.  The  opinions  of  the  Supreme 
Court  in  Kokomo,  etc.,  Co.  v.  Kitselman,  189  U.  S.  8,  23, 
23  Sup.  Ct.  521,  47  L.  Ed.  689,  and  of  this  court  in  Ney  v. 
Ney  Mfg.  Co.,  69  Fed.  405,  407,  408,  16  C.  C.  A.  293,  show 
situations  like  that  in  Boyd  v.  Janesville  Co.,  and  do  not 
lend  support  to  the  idea  that  the  junior  patent  tends  to 
prove  anything  more  than  patentable  difference." 

The  broad  doctrine  is  rejected  in  the  cases  cited  in  the 
note,111  but  the  exception  noted  in  the  Herman  v.  Youngs- 
town  Car  Mfg.  Co.  case  seems  to  be  recognized,  and  that 
case  may  be  considered  to  state  the  law  on  the  question. 

§  363.  A  change  of  form  does  not  avoid  an  infringement 
of  a  patent,  unless  the  form  shown  in  the  patent  is  neces- 
sary to  the  functions  which  the  patent  ascribes  to  the 
invention; 112  or  unless  that  form  is  the  distinguishing  char- 
acteristic of  the  invention;  113  or  is  essential  to  its  patent- 

111  Murray  v.  Detroit  Wire  112  Long  v.  Pope  Mfg.  Co.,  75 
Spring  Co.,  206  F.  R.  465  (6th  F.  R.  839,  1896;  Columbia  Wire 
Circuit),  1913;  J.  F.  Rowley  Co.  Co.  v.  Kokomo  Steel  &  Wire  Co., 
v.  Columbus  Pharmical  Co.,  220  143  F.  R.  116,  1905. 
F.  R.  127,  1915;  Munising  Paper  113  National  Hollow  Brake- 
Co.  v.  American  Sulphite  Pulp  Beam  Co.  v.  Interchangeable 
Co.,  228  F.  R.  700,  1915;  Curry  Brake-Beam  Co.,  106  F.  R.  711, 
v.  Union  Electric  Welding  Co.,  1901;  Ide  v.  Trorlicht,  Duncker 
230  F.  R.  422,  1916.  &  Renard  Carpet  Co.,  115  F.  R. 


i;,i 


IM  RINGEMENT 


[chap.  XVI. 


ability;  '"  or  unless  the  patentee  specifies  a  particular 
form  as  the  means  by  which  the  effect  of  the  invention 
is  produced; l16  or  otherwise  confines  himself  to  a  part  icular 
form  of  what  he  describes.116  Even  where  a  change  of 
form  somewhat  modifies  the  construction,  the  action  or 
the  utility  of  a  patented  thing,  non-infringement  will 
seldom  result  from  such  a  change.117  The  best  way  to 
show  the  scope  and  meaning  of  these  rules  is  to  collect 
and  explain  some  of  the  instances  in  which  changes  of 
form  have  been  held  to  be  immaterial  to  questions  of  in- 
fringement. 

§  365.  Ives  v.  Hamilton118  was  a  case  wherein  the  patent 


149,  1902;  Dowagiac  Mfg.  Co.  v. 
Superior  Drill  Co.,  115  F.  R.  904, 
1902;  Benbow-Brammer  Mfg.  Co. 
v.  Simpson  Mfg.  Co.,  132  F.  R. 
614,  1904;  0.  H.  Jewell  Filter  Co. 
v.  Jackson,  140  F.  R.  340,  1905; 
J.  L.  Owens  Co.  v.  Twin  City 
Separator  Co.,  168  F.  R.  259, 
1909;  Wayne  Mfg.  Co.  v.  Benbow- 
Brammer  Mfg.  Co.,  168  F.  R.  271, 
1909;  Wm.  B.  Scaife  &  Sons  Co. 
v.  Falls  City  Woolen  Mills,  209 
F.  R.  210,  1913;  Zittlosen  Mfg. 
Co.  v.  Boss,  219  F.  R.  887,  1914. 
114  Adam  v.  Folger,  120  F.  R. 
263,  1903;  Glauber  v.  H.  Mueller 
Mfg.  Co.,  169  F.  R.  110,  1909; 
M.  Solmson  v.  Bredin,  136  F.  R. 
187,  1905;  Cazier  v.  Mackie- 
Lovejoy  Co.,  138  F.  R.  654,  1905; 
B.  F.  Avery  &  Sons  v.  J.  I.  Case 
Plow  Works,  148  F.  R.  214,  1906; 
Detroit  Copper  Mining  Co.  v. 
Mine  &  Smelter  Supply  Co.,  215 
F.  R.  100,  1914. 


116  O'Reilly  v.  Morse,  15  How- 
ard, 123,  1853;  Ewart  Mfg.  Co.  v. 
Iron  Co.,  31  F.  R.  150,  1887; 
Pacific  Cable  Ry.  Co.  v.  Butte 
City  Ry.  Co.,  55  F.  R.  763,  1893. 

110  Pope  Mfg.  Co.  v.  Mfg.  Co., 
34  F.  R.  890,  1888;  Union  Steam 
Pump  Co.  v.  Battle  Creek  Steam 
Pump  Co.,  104  F.  R.  342,  1900. 

117  Risdon  Iron  &  Locomotive 
Works  v.  Trent,  92  F.  R.  389, 
1899;  McSherry  Mfg.  Co.  v. 
Dowagiac  Mfg.  Co.,  101  F.  R. 
721,  1900;  Dowagiac  Mfg.  Co.  r. 
Brennan  &  Co.,  127  F.  R.  143, 
1903;  Diamond  Match  Co.  v. 
Ruby  Match  Co.,  127  F.  R.  341, 
1904;  Hutter  v.  DeQ.  Bottle 
Stopper  Co.,  128  F.  R.  283,  1904; 
Lourie  Implement  Co.  v.  Lenhart, 
130  F.  R.  122,  1904;  Letson  v. 
Alaska  Packers'  Assoc'n,  130 
F.  R.  129,  1904. 

118  Ives  v.  Hamilton,  92  U.  S. 
431,  1875. 


CHAP.    XVI.]  INFRINGEMENT  455 

covered  a  combination  of  a  saw-mill  saw,  with  a  pair  of 
curved  guides  at  the  upper  end  of  the  saw;  and  a  lever, 
connecting  rod  or  pitman,  straight  guides,  pivoted  cross- 
head,  and  slides  or  blocks,  and  crank-pin,  or  their  equiva- 
lents, at  the  opposite  end;  whereby  the  toothed  edge  of 
the  saw  was  caused  to  move  unequally  forward  and  back- 
ward at  its  two  ends  while  sawing.  The  result  was  a 
rocking  or  vibratory  motion  in  the  saw,  instead  of  a 
straight  reciprocating  motion  theretofore  characteristic 
of  saw-mill  saws.  The  defendant  substituted  for  the 
curved  guides  of  the  patent,  similar  guides  made  crooked 
by  a  broken  line.  But  the  Supreme  Court  held  this  change 
of  form  not  to  avoid  infringement,  saying  that  a  curve 
is  often  treated  even  in  mathematical  science  as  consti- 
tuting a  succession  of  very  short  straight  lines,  or  as  one 
broken  line  constantly  changing  its  direction. 

§  366.  Morey  v.  Lockwood,119  was  a  case  in  which  the 
bill  was  based  on  the  patent  for  the  Davidson  syringe; 
an  invention  which  furnishes  a  good  illustration  of  one  of 
the  rules  which  relate  to  infringement,  as  well  as  of  one  of 
those  which  relate  to  novelty.  In  it  the  bulk  was  placed 
in  an  axial  line  with  two  flexible  tubes,  and  received  fluid 
at  one  of  its  ends,  from  one  of  those  tubes,  and  discharged 
the  same,  from  its  other  end,  into  and  through  the  other 
of  those  tubes.  The  Supreme  Court  held  the  patent  to 
have  been  infringed  by  the  Richardson  syringe,  in  which 
the  bulb  was  placed  above  the  axial  line  of  the  two  flexible 
tubes,  and  received  the  fluid  from  one  of  those  tubes  near 
the  point  where  it  discharged  the  same  into  the  other. 

§  367.  The  American  Diamond  Rock  Boring  Co.  v. 
The  Sullivan  Machine  Co.,120  was  a  case  involving  a  patent 

119  Morey  v.  Lockwood,  8  Wal-  Boring  Co.  v.  Sullivan  Machine 
lace,  230,  1868.  Co.,  14  Blatch.  119,  1877. 

120  American    Diamond    Rock 


I")li  INFRINGEMENT  [CHAP.    XVI. 

for  a  rock-boring  implement,  consisting  of  a  hollow  metal 
boring  head  armed  with  diamonds,  and  which,  when  moved 
with  a  combined  rotary  and  forward  motion,  bored  an 
annular  hole  into  rock,  leaving  a  central  core  to  be  subse- 
quently broken  by  a  wedge  and  then  readily  removed. 
The  defendant  used  a  rock-boring  tool,  consisting  of  a 
hollow  metal  boring  head,  but  having  its  bottom  partly 
plugged  so  as  to  leave  two  holes  elsewhere  than  in  the 
centre  of  the  head,  and  having  a  convex  surface  armed 
with  diamonds.  This  tool  bored  a  simple  hole  into  rock 
without  leaving  any  core  to  be  afterward  removed.  The 
change  of  form  involved  a  modification  of  the  action,  and 
perhaps  a  modification  of  the  utility  of  the  invention, 
but  it  was  held  not  to  avoid  infringement  of  a  claim  which 
did  not  mention  the  annular  form  of  the  implement. 

§  368.  Elizabeth  v.  Pavement  Co.121  was  a  case  based 
on  the  Nicholson  pavement  patent.  That  pavement  con- 
sisted primarily  of  rows  of  parallel-sided  wood  blocks,  set 
endwise,  on  a  continuous  foundation,  the  rows  being 
separated  by  parallel-sided  strips  of  board,  set  edgewise 
between  them,  and  resting  on  the  same  foundation,  and 
about  half  as  wide  as  the  blocks  were  long.  The  defendant 
made  a  pavement  differing  from  the  Nicholson  in  nothing, 
except  that  the  sides  of  the  strips  were  not  parallel  with 
each  other,  the  strips  being  thicker  at  the  top  than  at  the 
bottom  edge,  and  except  that  the  upper  angles  of  the 
strips  were  let  into  corresponding  notches  cut  in  the  sides 
of  the  blocks.  The  Supreme  Court  held  that  though  this 
change  in  the  form  of  the  blocks  and  of  the  strips  might 
constitute  an  improvement  in  point  of  utility,  it  did  not 
operate  to  avoid  infringement. 

§  368a.  Structures  which  are  designed  merely  for  the 
purpose  of  evading  the  spirit  of  the  invention  but  which 
121  Elizabeth  v.  Pavement  Co.,  97  U.  S.  137,  1877. 


CHAP.    XVI.]  INFRINGEMENT  457 

contain  all  the  elements  of  the  claims,  are  infringements 
of  the  patent.  For  example,  infringement  ma}-  not  be 
evaded  by  adding  to  the  structure  of  the  patent  an  easily 
discarded  part  which  may  or  may  not  be  used  by  the 
purchaser,  although  if  used  the  structure  would  not  be 
within  the  scope  of  the  patent.122  Likewise  the  charge 
of  infringement  is  not  averted  by  a  showing  that  the 
structure  may  be  and  occasionally  is  used  in  good  faith 
in  a  manner  that  would  not  infringe  if  it  would  infringe 
when  used  in  the  normal,  easiest  and  most  effective 
way.1'23 

§  369.  Patents  for  compositions  of  matter  give  rise  to 
questions  of  infringement  somewhat  peculiar  to  them- 
selves. Infringement  depends,  in  such  cases,  upon  same- 
ness or  equivalence  of  ingredients,  and  upon  substantial 
sameness  of  the  proportions  of  those  ingredients.  Omis- 
sion of  one  or  more  of  the  ingredients  of  a  patented  com- 
position of  matter  avoids  infringement,  as  truly  as  omis- 
sion of  one  of  its  parts  avoids  infringement  of  a  patent  for  a 
combination  of  mechanical  devices.124  Addition  to  a 
patented  composition  of  matter,  of  an  ingredient  which 
the  patent  purposely  avoided,  and  which  when  added 
substantially  changes  the  character  of  the  composition, 
also  avoids  infringement.125  But  an  addition  which  re- 
sults in  no  substantial  change  of  character,  and  which  was 

122  Weed  Chain  Tire  Grip  Co.  Co.  v.  DeForest  Telephone  &  Tel- 
v.  Cleveland  Chain  &  Mfg.  Co.,  egraph  Co.,  225  F.  R.  65,  1914; 
196  F.  R.  213,  1910;  Parsons  Parsons  Non-Skid  Co.  v.  Atlas 
Non-Skid  Co.  v.  Atlas  Chain  Co.,  Chain  Co.,  198  F.  R.  399, 
198  F.  R.  399,  1912;  Parsons  Non-  1912. 

Skid  Co.  v.  Asch,  196  F.  R.  215,  »«0tley  v.  Watkins,  36  F.  R, 

1912.  324,  1888;  Lane  v.  Levi,  104  O.  G. 

See    Wright    Co.    v.    Herring-  1898,  1903. 

Curtis  Co.,  211  F.  R.  654,  1914.  '"  Byam  r.  Eddy,  5  Blatch.  521, 

123  Marconi  Wireless  Telegraph  1853. 


458  [NFRINGEMEN  r  [CHAP.    XVI. 

aiade  merely  for  the  purpose  of  an  attempt  to  evade  the 
patent,  will  not  have  that  effect.1''1 

The  ascertainment  of  the  character  of  a  composition  of 
matter,  is  a  work  for  chemists;  and  that  work  consists  in 
the  application  of  proper  tests  to  each  particular  case. 
The  same  mysterious  forces  through  whose  action  and 
reaction  a  compound  was  produced,  must  be  availed  of 
to  disintegrate  and  disrupt  that  compound,  in  order  to 
ascertain  its  ingredients,  and  the  mode  of  their  mixture 
or  their  union.  All  the  tests  of  identity  specified  in  a 
patent,  on  a  composition  of  matter,  and  all  proper  tests 
of  identity,  whether  thus  specified  or  not,  may  be  invoked 
by  a  defendant  in  support  of  his  contention  of  non- 
infringement. But  a  patentee  is  confined  to  proper  tests 
of  identity,  and  cannot  impose  an  improper  test  upon  any 
defendant,  by  stating  it  in  his  patent,  as  being  legitimate.127 

§  370.  Substitution  of  one  equivalent  for  another,  in  a 
patented  composition  of  matter,  is  generally  as  ineffectual 
to  avoid  infringement  as  is  like  substitution  in  a  machine. 
An  equivalent  for  one  ingredient  of  a  patented  composi- 
tion of  matter  is  anything  which  in  that  composition  per- 
forms the  same  function  as  that  ingredient.128  Chemical 
equivalency  is  not  necessary  to  legal  equivalency  between 
substances,  in  respect  of  a  non-chemical  use  of  those 
substances.129  The  term  " equivalent"  means  "equally 
good"  when  it  refers  to  the  ingredients  of  compositions 
of  matter. 129a  Nor  will  the  fact  that  two  substances 
are  classified  by  chemists  in  the  same  group  necessarily 

126  Rich  v.  Lippincott,  2  Fisher,  light  Lamp  Co.,  87  F.  R. 
6,  1853.  221,  1898;  Treibacher-Chemische 

127  Matheson  v.  Campbell,  78  Werke  Gesellschaft,  etc.,  v.  Roess- 
F.  R.  910,  1897.  ler  &   Hasslacher  Chemical  Co., 

128  Woodworth  v.   Morrison,    1  219  F.  R.  210,  1914. 
Holmes,  131,  1872.  129<I  Tyler  v.  Boston,  7  Wallace, 

»*>  Welsbach  Light  Co.  v.  Sun-      330,  1868. 


CHAP.    XVI.]  INFRINGEMENT  459 

make  them  legal  equivalents.130  Where  the  composition 
of  matter  involved,  is  a  compound  of  metals,  an  equiva- 
lent of  either  of  those,  is  another  metal  having  similar 
properties,  and  producing  substantially  the  same  effect 
in  that  composition.131  And  a  substitute  is  not  less  an 
equivalent,  because  it  is  derived  from  a  different  source 
than  that  for  which  it  is  a  substitute,  or  because  the  pat- 
entee had  no  knowledge  of  it  when  he  received  his  pat- 
ent.132 

§  370a.  Where  a  patent  states  that  each  member  of  a 
group  of  substances  can  be  used  to  compose  the  matter 
which  is  the  subject  of  the  patent,  and  where  some  of 
those  members  cannot  be  thus  used,  the  patentee  cannot 
invoke  the  doctrine  of  equivalents  to  enable  him  to  monop- 
olize all  of  them  which  are  afterward  found  to  be  suitable 
for  the  purpose.  If  such  a  patent  has  only  a  generic  claim, 
purporting  to  cover  the  matter  of  the  patent  as  made  from 
any  of  the  prescribed  starting  materials,  that  patent 
is  void.133  But  if  such  a  patent  has  a  specific  claim,  lim- 
ited to  the  matter  of  the  patent  as  made  from  one  starting 
material  which  is  suitable  for  the  purpose,  that  claim  may 
be  valid,  though  a  generic  claim  in  the  same  patent  is 
not.134 

§  371.  A  substituted  ingredient  may  perform  the  re- 
quired function  better  than  the  patented  ingredient, 
and  may  perform  that  function  in  a  somewhat  different 
manner,  and  still  be  an  equivalent  for  the  latter.135    In 

130  General  Electric  Co.  v.  Laco-  133  Matheson  v.  Campbell,  78 
Philips    Co.,    233    F.     R.    96,      F.  R.  921,  1897. 

1916.  134  Consolidated  Electric  Light 

131  Matthews  v.  Skates,  1  Fisher,  Co.  v.  McKeesport  Light  Co.,  159 
609,  1860.  U.  S.  465,  1895. 

132  Standard  Paint  Co.  v.  Bird,  135  Atlantic  Giant  Powder  Co.  v. 
65  F.  R.  511,  1894.  Mowbray,  2  Bann.  &  Ard.  447, 

1876. 


460  [NFRINGEMEN  i'  [CHAP.    \\  I. 

the  case  cited  the  patent  covered  a  compound  of  nitro- 
glycerine  and  absorbent  matter,  of  which  infusorial  earth 
was  stated  to  be  the  preferred  variety.  The  absorbent 
matter,  when  mixed  with  three  times  its  weight  in  nitro- 
glycerine, absorbed  the  whole,  and  still  retained  the  form 
of  a  powder.  This  compound  made  dynamite.  The  de- 
fendant's compound  consisted  of  nitro-glycerine  and  mica 
scales  mixed  in  nearly  equal  proportions,  the  mica  scales 
not  absorbing  the  nitro-glycerine,  but  merely  holding  it 
in  suspension  upon  their  surfaces.  This  compound  was 
called  mica  powder.  Its  use  at  the  Hoosac  Tunnel  demon- 
strated its  superiority  over  dynamite,  in  point  of  effi- 
ciency, economy,  and  safety;  and  there  is  evidently  a 
difference  between  a  powder  which  absorbs  a  liquid  as  in 
minute  capillary  tubes,  and  one  which  does  not  absorb, 
but  which  carries  a  liquid  upon  the  surfaces  of  its  parti- 
cles. But  notwithstanding  these  differences,  Judge 
Shepley,  in  an  accomplished  opinion,  held  the  mica  powder 
to  infringe  the  dynamite  patent.  So  also,  in  a  later  case 
on  the  same  patent,136  the  same  judge  held  a  certain  gun- 
powder to  be  an  equivalent  of  the  infusorial  earth,  because 
it  performed  every  function  of  the  latter  substance,  though 
it  also  performed  the  additional  function,  at  the  time  of 
the  explosion  of  the  compound,  of  co-operating  with  the 
nitro-glycerine  in  rending  the  rock,  instead  of  remaining, 
like  infusorial  earth,  an  inert  substance.  The  doctrine 
which  results  from  this  case  is  that  one  ingredient  is  an 
equivalent  of  another  in  the  composition  of  matter;  if  it 
performs  the  same  function,  even  though  it  also  performs 
another  function,  which  that  other  is  wholly  incompetent 
to  accomplish. 

§  372.  When  a  patent  expressly  states  that  the  composi- 

136  Atlantic  Giant  Powder  Co.  v.  Goodyear,  3  Bann.  &  Ard.  161, 

1877. 


CHAP.    XVI.]  INFRINGEMENT  1()1 

tion  of  matter  which  it  covers,  does  not  include  a  specified 
ingredient  of  similar  compositions,  the  substitution  of 
that  ingredient  for  one  of  those  covered  by  the  patent, 
is  enough  to  avoid  infringement,  even  though  the  two 
ingredients  perform  that  same  function  in  that  composi- 
tion of  matter.  But  this  does  not  amount  to  saying  that 
the  two  things  are  not  equivalents.  It  merely  amounts 
to  the  doctrine  that  a  patentee  may  disclaim  a  particular 
equivalent  if  he  chooses.137  And  where  a  particular  equiv- 
alent is  disclaimed,  that  disclaimer  is  binding  even  if  it 
was  unnecessary.138 

§  373.  Changes  of  the  proportions  of  the  ingredients 
of  a  composition  of  matter  will  not  avoid  infringement  of  a 
patent  for  such  a  composition,  where  those  changes  do 
not  affect  its  essential  character  in  any  way  more  impor- 
tant than  to  increase  its  bulk  more  than  they  increase  its 
cost.139 

But  changes  in  proportion,  which  change  the  operative 
character  of  a  composition  of  matter,  together  with 
changes  in  its  mode  of  manufacture,  may  sometimes 
amount  to  enough  to  avert  any  charge  of  infringement  of 
a  patent  on  the  original  composition.140 

§  375.  A  design  patent  is  infringed  by  any  design  which, 
to  general  observers  interested  in  the  subject,  or  to  pur- 
chasers of  things  of  similar  design,  has  the  same  appear- 
ance as  that  of  the  design  covered  by  the  patent,  U1 

137  Byam  v.  Farr,  1  Curtis,  260,  141  Gorham  v.  White,  14  Wal- 
1852.  lace,  528, 1871 ;  Perry  v.  Starrett,  3 

138  Cartridge  Co.  v.  Cartridge  Bann.  &  Ard.  485,  1878;  Dryfoos 
Co.,  112  U.  S.  624,  1884.  v.  Friedman,  18  F.  R.  824,  1884; 

139  Eastman  v.  Hinckel,  5  Bann.  Tomkinson  v.  Mfg.  Co.,  23  F.  R. 
&  Ard.  1,  1879.  895,  1884;  Redway  v.  Ohio  Stove 

140  Atlantic  Dynamite  Co.  v.  Co.,  38  F.  R.  584,  1889;  Sutro 
Climax  Powder  Mfg.  Co.,  72  Bros.  Braid  Co.  v.  Schloss,  44 
F.  R.  935,  1895.  F.    R.    357,    1890;    Macbeth    v. 


162 


INFKINCJKMENT 


[chap.  XVI. 


and  to  this  end  the  two  articles  may  be  compared  as  they 
appear  when  in  use;1 ""  but  a  design  patent  is  not  infringed 
by  anything  which  does  not  present  the  appearance  which 
distinguishes  the  design  claimed  in  the  patent,  from  the 
prior  art.142  For  design  patents  cover  appearances  only, 
and  not  uses.143  Appearances  of  designs  are  to  be  judged 
by  synthetic  observation,  rather  than  by  analytic  in- 
spection. The  fact  that  an  analysis  of  two  forms  of  design 
discloses  differences  between  them,  is  insufficient  to  show 
lack  of  that  substantial  identity  of  appearance,  which 
constitutes  infringement.  The  test  is  not  whether  an 
ordinary  purchaser  might  be  deceived  into  buying  one 
article  for  another,  but  it  is  the  sameness  of  aesthetic 
effect  on  the  eye.144  Such  a  question  of  identity  is  to  be 
decided  on  the  basis  of  the  opinions  of  average  observers, 
and  not  upon  the  basis  of  the  opinions  of  experts.145  It 
matters  not  to  what  articles  the  patentee  applies  his 
design  or  in  what  channels  of  trade  it  goes,  or  to  what 
material  he  applies  it.    If  the  defendant  uses  the  design, 


Gillinder,  54  F.  R.  172,  1891; 
Smith  v.  Stewart,  55  F.  R.  483, 
1893;  Graff,  Washbourne  &  Dunn 
v.  Webster,  195  F.  R.  522,  1912; 
Macbeth-Evans  Glass  Co.  v. 
Rosenbaum  Co.,  199  F.  R.  154, 
1912;  Bush  &  Lane  Piano  Co.  v. 
Becker  Bros.,  209  F.  R.  233, 1913; 
Mygatt  v.  Schaffer,  218  F.  R.  827, 
1914;  Ashley  v.  Weeks-Numan 
Co.,  220  F.  R.  899,  1915;  GreUe 
v.  City  of  Eugene,  221  F.  R.  68, 
1915. 

14iaBolte  &  Weyer  Co.  v. 
Knight  Light  Co.,  180  F.  R.  412, 
1910. 


142  New  York  Belting  Co.  v. 
New  Jersey  Rubber  Co.,  53  F.  R. 
815,  1893;  Byram  v.  Friedberger, 
87  F.  R.  559,  1897;  Bevin  Bros. 
Mfg.  Co.  v.  Starr  Bros.  Bell  Co., 
114  F.  R.  362,  1902;  Krutt- 
schnitt  v.  Simmons,  118  F.  R. 
851,  1902. 

143  Royal  Metal  Mfg.  Co.  v. 
Art  Metal  Works,  121  F.  R.  128, 
1903. 

144Bolte  &  Weyer  Co.  v. 
Knight  Light  Co.,  180  F.  R. 
412,  1910. 

145  Bolte  &  Weyer  Co.  v.  Knight 
Light  Co.,  180  F.  R.  412,  1910. 


CHAP.    XVI.]  INFRINGEMENT  463 

at  least  in  a  non-analogous  manner,  he  is  liable  for  in- 
fringement.146 

§  376.  The  comparative  utility  of  the  plaintiff's  and 
the  defendant's  process,  machine,  manufacture,  or  com- 
position of  matter,  is  not  alone  a  criterion  of  infringe- 
ment.147 No  man  is  permitted  to  evade  a  patent  by  simply 
constructing  the  patented  thing  so  imperfectly  that  its 
utility  is  diminished.148  On  the  other  hand,  a  defendant's 
machine  may  be  better  than  that  covered  by  the  patent 
in  suit  and  may  be  an  improvement  upon  it;  if  that 
superiority  resulted  from  some  addition  to  the  latter, 
it  will  have  no  tendency  to  avoid  infringement,149  and  it 
matters  not  that  the  addition  or  improvement  is  patent- 
able or  patented.150  On  the  other  hand,  the  superiority 
of  the  defendant's  machine  may  be  due  to  the  fact  that 
he  has  discovered  an  entirely  different  mode  of  construc- 
tion and  operation  in  which  event  it  does  not  infringe.151 

l"  Dominick  &  Haff  v.  R.  Wal-  Ries  v.  Barth  Mfg.  Co.,  136  F.  R. 

lace  &  Sons  Mfg.  Co.,  209  F.  R.  850,  1905;  General  Electric  Co.  v. 

223,  1913.                            t  ,  Morgan-Gardner     Electric     Co., 

147  Crown  Cork  &  Seal  Co.  y.  159  F.  R.  951, 1907;  International 
Aluminum  Stopper  Co.,  1Q§  F.  R\  Time  Recording  Co.  v.  W.  H. 
848,  1901.  Bundy  Recording  Co.,  159  F.  R. 

148  Chicago  Fruit  House  Co.  v.  464,  1908;  Standard  Paint  Co.  v. 
Busch,  2  Bissell,  472,  1871;  Rob-  Bird,  175  F.  R.  346,  1910;  Stock- 
erts  v.  Harnden,  2  Cliff.  506, 1865;  land  v.  Russell  Grader  Mfg.  Co., 
Whitely  v.  Fadner,  73  F.  R.  486,  222  F.  R.  906,  1915;  Yancey  v. 
1895.  Enright,    230   F.    R.   641,    1916. 

149  Pitts  v.  Wemple,  1  Bissell,  See  Section  347. 

87,    1855;    Carter    v.    Baker,    1  150  Benjamin  Electric  Mfg.  Co. 

Sawyer,  512,  1871;  American  De-  v.   Dale    Co.,    158    F.    R.    617, 

linter  Co.  v.  American  Machinery  1907. 

&  Const.  Co.,  128  F.  R.  709,  1904;  See  Section  362a. 

Eck  v.  Kutz,  132  F.  R.  758,  1904;  151  Duncan  v.  Cincinnati  Butch- 

Voightmann    v.    Weis    &    Ridge  ers'  Supply  Co.,  171  F.  R.  656, 

Cornice  Co.,  133  F.  R.  298,  1904;  1909. 


Kil 


[NFRINGEMENT 


[chap.  XVI. 


In  oilier  words,  the  defendant's  machine  may  be  of  a 

different  species  and  of  course  cannot  infringe  a  patent  of  a 
different  species  than  itself  although  it  might  infringe  the 
genus  patent  of  which  both  are  species. 

But  comparative  utility  is  relevant  to  questions  of  in- 
fringement, when  its  consideration  is  coupled  with  the 
consideration  of  comparative  character.152  An  invention, 
which  was  never  useful  enough  to  be  used  in  any  product- 
ive business,  cannot  be  dragged  across  the  road  which 
leads  toward  success,  and  thus  be  made  to  prevent  the 
progress  of  a  useful  art  along  that  road.153  An  invention 
which  succeeds,  is  not  to  be  suppressed  by  means  of  a 
patent  on  an  invention  which  failed,  and  can  never  suc- 
ceed.154 

§  377.  To  constitute  an  infringement  of  a  patent,  it  is 
not  necessary  that  the  infringer  should  have  known  of 
the  existence  of  the  patent  at  the  time  he  infringed  it;  155 
or,  knowing  of  its  existence,  it  is  not  necessary  that  he 
should  have  known  his  doings  to  constitute  an  infringe- 
ment.156 And  infringement  is  not  averted  by  the  fact 
that  the  infringer  contrived  his  own  process,  machine, 
manufacture,  or  composition  of  matter,  as  the  case  may  be, 
without  any  knowledge  of  the  patent  infringed  thereby.157 


152  Goodyear  Shoe  Mach.  Co. 
v.  Spaulding,  101  F.  R.  994, 
1900. 

153  General  Electric  Co.  v.  Win- 
stedGas  Co.,  110  F.  R.  963,  1901; 
Severy  Process  Co.  v.  Harper  & 
Bros.,  113  F.  R.  584,  1902. 

154  Westinghouse  Air-Brake  Co. 
v.  New  York  Air-Brake  Co.,  112 
F.R.  428, 1901. 

155  Parker  v.  Haworth,  4  Mc- 
Lean,   373,    1848;    Matthews    v. 


Skates,  1  Fisher,  608,  1860;  Na- 
tional Car  Brake  Shoe  Co.  /'. 
Mfg.  Co.,  19  F.  R.  520,  1884; 
Royer  v.  Coupe,  29  F.  R.  361, 
1886;  Bate  Refrigerating  Co.  v. 
Gillett,  31  F.  R.  815,  1887. 

156  Parker  v.  Hulme,  1  Fisher, 
54,  1849;  Norton  v.  Automatic 
Can  Co.,  57  F.  R.  933,  1893. 

157  United  States  v.  Berdan 
Fire  Arms  Co.,  156  U.  S.  566, 
1895. 


CHAPTER  XVII 


COURTS,  PARTIES  AND  CAUSES 


378.  Introductory  explanation. 

379.  Jurisdiction  of  United  States 

courts  of  first  resort  in  pat- 
ent cases. 

380.  Non-jurisdiction     of     State 

courts  in  patent  cases. 

388.  Jurisdiction  of  State  courts 

over  controversies  grow- 
ing out  of  contracts  rele- 
vant to  patents. 

389.  Jurisdiction     of     individual 

United  States  courts  of 
first  resort  in  patent  cases. 

390.  Qualification  of  the  rule  of 

the  last  section. 

391.  Jurisdiction  of  the  Court  of 

Claims. 

392.  Absence    of    jurisdiction   of 

the  Court  of  Claims  over 
causes  of  action  based  on 
unauthorized  making,  us- 
ing, or  selling  by  the 
United  States  Govern- 
ment of  specimens  of  a 
patented  process  or  thing. 

393.  Presence   of  jurisdiction  of 

United  States  Circuit 
Courts  over  actions 
brought  against  agents  of 
the  United  States  Gov- 
ernment, and  based  on 
unauthorized  making,  us- 
ing, or  selling,  by  those 


agents,  on  behalf  of  the 
Government,  of  specimens 
of  a  patented  process  or 
thing. 

394.  Who  may  be  a  plaintiff  or 

complainant  in  a  patent 
action. 

395.  Who    may    be    plaintiff    or 

complainant  in  an  action 
based  on  an  assigned  ac- 
crued right  of  action  for 
infringement. 

396.  Executors    and    administra- 

tors as  plaintiffs  and  com- 
plainants. 

397.  Assignees  of  executors  or  ad- 

ministrators as  plaintiffs 
and  complainants. 

398.  Attorneys  in  fact  cannot  be 

nominal  plaintiffs  or  com- 
plainants. 

399.  Owners  in  common  as  joint 

plaintiffs  or  complainants. 

400.  Licensees  cannot  be  nominal 

plaintiffs,  nor  sole  nominal 
complainants. 

401.  Who  may  be  made  a  defend- 

ant in  a  patent  action. 

402.  Minors  and  married  women 

as  defendants. 

403.  Agents,  salesmen,  and  other 

employed  persons,  as  de- 
fendants. 

465 


466  COURTS,    PARTIES,    CAUSES         [CHAP.    XVII. 

101.  Employers  as  defendants.  113.  Officers  of  corporations. 

Ki."i.  Persons  as  defendants  wrho  414.  Directors  <»f  corporal  ions. 

have  caused  others  to  in-  415.  Statutory  liability  of  officers, 

fringe.  directors,  and   stockhold- 

106.  Joint   infringers  as  defend-  era  of  corporations. 

ants.  416.  Consolidated  corporations  as 

107.  Contributory  infringement.  defendants     in      actions 

408.  Partners  as  defendants.  based    on     infringements 

409.  Private  corporations  as  de-  committed  by  their  con- 

fendants.  stituent  corporations. 

410.  Officers,  directors,  and  stock-      417.  Causes  of  action  based  on  a 

holders  of  corporations  as  plurality  of  patents  or  on 

defendants.  both  terms  of  an  extended 

411.  The  same  subject  continued.  patent,  or  on  a  patent  and 

412.  Stockholders     of      corpora-  a  trade-mark. 

tions. 

§  378.  The  foregoing  part  of  this  text-book  treats  of  the 
rights  of  inventors  and  patentees,  and  of  their  assignees, 
grantees,  licensees,  and  legal  representatives;  and  also 
treats  of  the  wrongs  which  are  committed  when  those 
rights  are  infringed.  The  remaining  part  explains  the 
remedies  which  may  be  invoked,  sometimes  to  prevent, 
and  sometimes  to  repair  such  wrongs  of  infringement. 
The  present  chapter  is  devoted  to  the  courts  which  may 
originally  administer  those  remedies;  and  to  the  parties 
who  may  invoke  them,  and  against  whom  they  may  be 
invoked;  and  to  the  causes  of  action  which  justify  patent 
litigation  between  those  parties  in  those  courts. 

§  379.  The  Circuit  Courts  of  the  United  States,  before 
they  were  abolished,  had  original  jurisdiction,  regardless 
of  the  amount  involved,  of  all  suits  at  law  or  in  equity, 
arising  under  the  patent  laws  of  the  United  States.1  By 
the  Judiciary  Act  of  March  3,  1911,  36  Statutes  1100, 
known  as  the  Judicial  Code,  this  jurisdiction  was  vested 

1  Revised  Statutes,  Section  629;  Miller-Magee  Co.  v.  Carpenter,  34 
F.  R.  434,  1888. 


CHAP.    XVII.]  COURTS,    PARTIES,    CAUSES  467 

in  the  District  Courts.1"  The  same  jurisdiction  belongs 
to  the  District  Courts  of  the  Territories  of  the  United 
States,2  and  to  the  Supreme  Court  of  the  District  of  Co- 
lumbia.3 

This  jurisdiction  is  independent  of  all  State  statutes; 
and  therefore  a  corporation  of  any  State  may  begin  and 
prosecute  an  action  arising  under  the  patent  laws,  in  any 
proper  Federal  court,  without  complying  with  any  State 
statute  which  may  require  foreign  corporations  to  file 
copies  of  their  respective  charters  in  some  State  custody, 
before  beginning  any  suit  in  any  court  of  that  State.4 

Not  every  suit  arises  under  the  patent  laws,  which 
relates  to  letters  patent  for  inventions;  for  some  suits 
relate  to  letters  patent  for  inventions,  though  they  arise 
out  of  contracts  between  private  parties.  An  action  at 
law  which  seeks  a  judgment  for  damages,  or  an  action  in 
equity  which  seeks  a  decree  for  an  injunction  and  a  money 
recovery,  on  account  of  an  alleged  infringement  of  a 
patent,  is  an  action  arising  under  the  patent  laws  of  the 
United  States.5 

An  action  on  a  judgment  obtained  in  a  patent  case  is 
not,  however,  a  suit  arising  under  the  patent  laws,  even 
though  it  is  brought  against  directors  of  an  insolvent 
corporation  to  make  them  liable  for  a  judgment  obtained 
in  an  infringement  suit  against  the  corporation.6 

§  380.  Whether  State  courts  have  any  jurisdiction  of 
actions  for  infringements  of  patents  was  a  question  which, 

1<X  Judicial  Code,  Sections  289  to  District  of  Columbia;  Cochrane 

296.  v.  Deener,  94  U.  S.  782,  1876. 

2  Revised  Statutes,  Section  "  Columbia  Wire  Co.  v.  Free- 
1910,  and  Section  1911,  as  man  Wire  Co.,  71  F.  R.  302, 1895. 
amended  June  29,  1876,  19  5  Victor  Talking  Mach.  Co.  v. 
Statutes  at  Large,  Ch.  154,  p.  62.  The  Fair,  123  F.  R.  424,  1903. 

3  Sections  760  and  764  of  the  "H.  C.  Cook  Co.  v.  Beecher, 
Revised  Statutes  relating  to  the  217  U.  S.  497,  1910. 


his  COURTS,    PARTIES,    CAUSES         [CHAP.    XVII. 

under  the  Revised  Statutes  of  1874,  was  clearly  answer- 
able in  the  negative.7  Bu1  in  1ST")  Congress  enacted  a 
statute  which  provided:  "That  the  Circuit  Courts  of  the 
United  States  shall  have  original  cognizance,  concurrent 
with  the  courts  of  the  several  States,  of  all  suits  of  a  civil 
nature  at  common  law  or  in  equity,  where  the  matter  in 
dispute  exceeds,  exclusive  of  costs,  the  sum  or  value  of 
five  hundred  dollars,  and  arising  under  the  Constitution 
or  laws  of  the  United  States."  8  This  statute  of  1875 
appeared  to  assume  that,  in  the  absence  of  congressional 
prohibition,  the  State  courts  would  inherently  have  con- 
current jurisdiction  with  the  Federal  courts  of  all  suits 
of  a  civil  nature,  at  common  law  or  in  equity,  arising  under 
the  Constitution  or  laws  of  the  United  States;  and  it 
seemed  to  remove  the  prohibition  contained  in  the  Re- 
vised Statutes.  Accordingly,  in  the  first  and  second  edi- 
tions of  this  book,  Sections  381  to  387  were  devoted  to  the 
great  question  whether,  in  the  absence  of  congressional 
prohibition,  State  courts  would  have  jurisdiction  of  civil 
actions  arising  under  the  Constitution  or  laws  of  the  United 
States.  In  those  sections  it  was  shown  that  Alexander 
Hamilton  and  Justice  Washington  held  the  affirmative 
of  that  question,  while  Justice  Story,  Chancellor  Kent, 
and  Justice  Field  held  the  negative;  and  that  the  Su- 
preme Court  had  never  decided  the  question;  but  that  the 
strongest  relevant  reasons  supported  the  negative  opin- 
ion. But,  independent  of  that  great  question,  the  Su- 
preme Court  has  now  decided  that  the  statute  of  1875, 
as  amended  in  1887  and  1888,  does  not  affect  the  jurisdic- 
tion, granted  by  earlier  statutes,  of  any  court  of  the  United 
States  over  specified  cases  arising  under  the  Constitution 
and  laws  of  the  United  States;  and  therefore  the  later 

7  Revised      Statutes,      Section  s  18  Statutes  at  Large,  Part  3, 

711.  Ch.  137,  Section  1,  p.  470. 


CHAP.    XVII. |  COURTS,    PARTIES,    CAUSES  469 

statute  does  not  apply  to  any  case  arising  under  the  pat- 
ent laws  of  the  United  States.9  Thus  it  is  now  established 
that  State  courts  have  no  jurisdiction  of  such  cases.  And 
it  accordingly  has  been  so  said  by  several  Federal  judges,10 
and  by  several  State  courts." 

§  388.  Actions  brought  to  enforce  contracts  between 
private  parties,  relevant  to  patent  rights,  are  not  actions 
arising  under  the  patent  laws  of  the  United  States;  and 
therefore  are  not  cognizable  as  such  in  the  United  States 
courts.12  And  actions  to  set  aside  such  contracts  fall  in 
the  same  category.13  This  doctrine,  however,  was  severely 
strained  in  the  Supreme  Court  decision  in  the  case  of  New 
Marshall  Engine  Co.  v.  Marshall  Engine  Co.,13"  a  case  in 
which  the  bill  was  brought  in  a  State  court  on  a  contract 
to  assign  a  certain  patent  and  "all  improvements  thereon 
and  renewals  of  the  same."  The  patent  specifically  desig- 
nated was  assigned  in  compliance  with  the  contract  and 

9  In  re  Hohorst,  150  U.  S.  661,  Mfg.  Co.  v.  Hyatt,  125  U.  S.  46, 

1893.  1888;  Marsh  v.  Nichols,  140  U.  S. 

w  White  v.  Rankin,  144  U.  S.  344,    1891;   Pratt    v.   Paris    Gas 

636,  1892;  In  re  Keasbey  &  Mat-  Light  &  Coke  Co.,  168  U.  S.  260, 

tison  Co.,   160  U.  S.  230,   1895;  1897;    Standard    Sewing    Mach. 

Pratt  v.  Paris  Gas  Light  &  Coke  Co.  v.  Leslie,  118  F.  R.  557,  1902; 

Co.,  168  U.  S.  259,  1897;  Myers  v.  Victor  Talking  Mach.  Co.  v.  The 

Cunningham,  44  F.  R,  347,  1890;  Fair,  123  F.  R.  424,  1903;  New 

Elgin  Wind  Power  &  Pump  Co.  Marshall  Co.  v.  Marshall  Engine 

v.  Nichols,  65  F.   R.  217,   1895;  Co.,  223  U.  S.  473,  1912;  Briggs 

Hupfeld  v.  Automaton  Piano  Co.,  v.  United  Shoe  Co.,  239  U.  S.  48, 

66  F.  R.  789,  1895.  1915. 

11  Continental  Store  Service  ia  Wilson  v.  Sandford,  10  How- 
Co.  v.  Clark,  100  N.  Y.  370,  1886;  ard,  101,  1850;  Wade  v.  Lawdcr, 
Waterman  v.  Shipman,  130  N.  Y.  165  U.  S.  624,  1897;  Standard 
308,  1891;  Havana  Press  Drill  Dental  Mfg.  Co.  v.  National 
Co.  v.  Ashurst,  148  111.  137,  1893.  Tooth  Co.,  95  F.  R.  291,  1899. 

12  Brown  v.  Shannon,  20  How-  13a  New  Marshall  Engine  Co.  v. 
ard,  56,  1857;  Albright  v.  Teas,  Marshall  Engine  Company,  223 
106  U.  S.  613,   1882;  Dale  Tile  U.  S.  473,  1912. 


470  COURTS,    PARTIES,    CAUSES         [CHAP.    XVII. 

thereafter  the  inventor  invented  what  was  alleged  in  the 
bill  to  be  an  improvement  on  the  patent  assigned.  In 
addition  the  bill  prayed  that  the  defendants  should  be 
enjoined  from  manufacturing  or  selling  machines  covered 
by  the  improvement  patent.  The  defendant  moved  to 
dismiss  the  bill  because  "it  presents  questions  involving 
an  inquiry  as  to  the  construction  and  scope  of  the  patents 
therein  mentioned,  of  which  questions  the  Federal  Courts 
have  exclusive  jurisdiction."  Justice  Lamar  who  deliv- 
ered the  opinion  said  in  part  as  follows : 

"The  complainant  did  not  by  its  bill  in  the  State  Court 
raise  any  question  as  to  the  validity  or  construction  of 
the  patent,  nor  did  it  make  any  claim  for  damages  for 
infringement.  .  .  .  The  Patent  725,349  was  an  improve- 
ment thereon  (on  the  original  patent)  as  on  the  face  of 
the  application  and  letters  patent  it  appeared  to  be,  then 
the  complainant  was  entitled  to  a  decree  requiring  Mar- 
shall to  make  conveyance  which  could  be  properly  re- 
corded for  the  protection  of  the  true  owner. 

"It  is,  however,  urged  that  the  State  Court  was  ousted 
of  the  jurisdiction  to  enter  a  decree  for  specific  performance 
because  the  bill  went  further  and  prayed  that  the  defend- 
ants and  each  of  them  should  be  enjoined  from  manufac- 
turing and  selling  machines  covered  by  Patent  725,349. 
It  is  claimed  that  this  was,  in  effect,  an  application  and 
decree  for  injunction  against  infringement  and  could  only 
be  granted  by  a  Federal  Court. 

"But  the  allegations  of  the  complainant's  bill  did  not 
involve  any  construction  of  the  meaning  or  effect  of 
Patent  725,349  nor  does  it  charge  that  the  manufacture 
or  sale  of  engines  by  the  defendants  would  be  an  infringe- 
ment of  the  patent  or  of  any  right  of  the  complainant  if 
in  fact,  patent  725,349  belonged  to  the  New  Marshall 
Engine  Co.    The  injunction  was  asked  for  only  as  an  in- 


CHAP.    XVII.]  COURTS,    PARTIES,    CAUSES        ■  471 

cident  of  a  finding  that  the  title  was  vested  in  the  com- 
plainant." 

But  a  majority  of  the  Supreme  Court  has  gone  further 
than  any  of  the  rules  above  stated,  and  in  spite  of  a 
vigorous  dissent  from  the  minority,  has  held  another 
doctrine  which  is  as  follows:  Where  a  complainant  files 
a  bill,  in  which  he  states  a  patent  right,  and  states  its 
use  by  the  defendant;  and,  in  a  charging  part,  recites  the 
particulars  of  an  alleged  license  claimed  by  the  defendant 
to  be  a  justification  of  that  use,  and  avers  that  there  is  no 
such  license  in  existence,  and  prays  for  an  injunction  and 
an  account  of  infringer's  profits;  and  where  the  defendant 
files  an  answer,  admitting  the  patent  right,  and  admitting 
the  use,  and  defending  only  on  the  ground  of  the  alleged 
license;  then  the  action  is  not  one  arising  under  the  patent 
laws  of  the  United  States.14  But  there  is  no  warrant  for 
pressing  that  conclusion  any  further  than  it  necessarily 
goes;  no  warrant  for  applying  its  doctrine  to  any  case 
which  lacks  any  of  the  elements  upon  which  it  was  based. 
And  neither  the  Supreme  Court  nor  the  other  Federal 
tribunals  have  shown  a  disposition  so  to  do.15 

Where  a  complainant  files  a  bill  in  which  he  states  a 
patent  right,  and  states  its  use  by  the  defendant,  and  says 
nothing  about  any  contract  or  license,  and  prays  for  an 
injunction  and  an  account  of  infringer's  profits;  and  where 
the  defendant  thereupon  files  an  answer  in  which  he  does 
not  traverse  any  part  of  the  bill,  but  pleads,  by  way  of 
confession  and  avoidance,  that  he  has  a  license  which 
covers  his  use  of  the  patent,  it  will  not  do  to  apply  the 
rule  in  Hartell  v.  Tilghman.  If  that  rule  were  applied  to 
such  a  case,  it  would  result  in  a  dismissal  of  the  bill  for 

14  Hartell  v.  Tilghman,  99  U.  S.  wood-Morrison  Co.,  102  F.  R. 
547,  1878.  955,  1900;  Leslie  Co.  v.  William 

«  Atherton  Mach.   Co.  v.  At-      Mann  Co.,  157  F.  R.  236,  1907. 


I7'_> 


COURTS,    PARTIES,    CAUSES         [CHAP.    XVII. 


want  of  jurisdiction.  Then  if  the  complainant  should 
file  a  new  bill  in  a  State  court,  precisely  like  the  other, 
and  if  the  defendant  should  thereupon  file  an  answer 
saying  nothing  about  any  license,  but  denying  the  validity 
of  the  patent,  that  suit  would  also  have  to  be  dismissed, 
because  it  would  present  no  controversy  except  one  touch- 
ing the  validity  of  a  patent  for  an  invention.  Any  in- 
fringer of  a  patent  could  thus  defeat  every  suit  based  on 
his  infringement,  by  simply  making  one  defence  in  one 
court  and  another  defence  in  another  court,  no  matter 
how  fictitious  both  of  those  defences  might  be.  A  con- 
sequence so  unjust  could  not  be  tolerated;  and  the  law 
is  now  settled  that  where  a  plaintiff  decides  to  sue  a  de- 
fendant as  a  naked  infringer,  the  Federal  courts  have 
jurisdiction,  and  that  such  jurisdiction  cannot  be  ousted 
by  any  answer  which  the  defendant  may  interpose.16 

§  389.  Actions  for  infringement  of  patents,  being  transi- 
tory in  their  nature,  could  formerly  be  brought  in  any  dis- 
trict in  which  the  defendant  was  an  inhabitant  or  should 
be  found.17  But  a  statute  of  March  3,  1897,  re-enacted 
by  Act  of  March  3,  1911,  c.  231,  §48  (36  Stat.  1100),  re- 
stricts such  suits  to  the  district  of  which  the  defendant  is 
an  inhabitant,  or  to  any  district  in  which  the  defendant, 
whether  a  person,  partnership,  or  corporation,  shall  have 
committed  acts  of  infringement,  and  have  a  regular  and 


16  White  v.  Rankin,  144  U.  S. 
628,  1892;  Excelsior  Wooden  Pipe 
Co.  v.  Pacific  Bridge  Co.,  185 
U.  S.  282,  1902;  Elgin  Wind 
Power  &  Pump  Co.  v.  Nichols,  65 
F.  R.  217,  1895;  Everett  v.  Haul- 
enbeek,  68  F.  R.  911, 1895;  Young 
Reversible  Lock-Nut  Co.  v.  Young 
Lock-Nut  Co.,  72  F.  R.  62,  1896; 
Pacific  Contracting  Co.  v.  Union 


Paving  Co.,  80  F.  R.  737,  1897; 
Atherton  Mach.  Co.  v.  Atwood- 
Morrison  Co.,  102  F.  R.  949, 
1900;  Clancy  v.  Troy  Belting  & 
Supply  Co.,  157  F.  R.  554,  1907; 
The  Fair  v.  Kohler  Die  Co.,  228 
U.  S.  22,  1913. 

17 18  Statutes  at  Large,  Part  3, 
Ch.  137,  Section  1,  p.  470. 


CHAP.    XVII.]  COURTS,    PARTIES,    CAUSES  473 

established  place  of  business.18  These  restrictions  on 
jurisdiction  are,  however,  merely  a  personal  privilege  and 
are  waived  by  a  general  appearance.19  Further,  the  stat- 
ute applies  not  only  to  defendants  who  are  inhabitants  of 
some  district  within  the  United  States  but  also  to  non- 
resident aliens,  who  may  be  served  by  substituted  service 
on  their  agents  in  the  United  States  whether  the  alien  is 
a  person,  partnership,  or  corporation.20  In  addition  aliens 
may  be  sued  in  any  district  in  which  they  are  found.21 

The  general  appearance,  however,  is  limited  in  its  ap- 
plication by  the  scope  of  the  action  in  which  the  general 
appearance  is  filed,  and  such  an  appearance  does  not 
warrant  the  court  in  allowing  an  amendment  which  sets 
up  a  new,  different  or  distinct  cause  of  action  from  that 
set  up  in  the  original  bill ;  as  for  instance  a  cause  of  action 
on  which  the  defendant  could  not  originally  have  been 
sued  in  the  jurisdiction  where  the  suit  was  commenced.22 

Section  740  of  the  Revised  Statutes,  providing  that 
where  there  are  two  or  more  defendants  residing  in  differ- 
ent Federal  districts  of  the  same  State,  the  suit  may  be 
brought  in  either  district  and  jurisdiction  of  all  defend- 
ants obtained  by  the  issuance  and  service  of  duplicate 
subpoenas,  does  not  apply  to  suits  for  infringement  of 
patents,  and  where  there  are  two  or  more  joint  defend- 
ants living  in  different  districts  of  the  same  State,  each 

18  29  Statutes  at  Large,  Ch.  Elberfeld  Co.,  203  F.  R.476, 1913. 
395,  p.  695;  Bowers  v.  Atlantic  21  United  Shoe  Mach.  Co.  v. 
G.  &  P.  Co.,  104  F.  R.  889,  1900.  Duplessis,  etc.,   Co.,    133  F.   R. 

19  U.  S.  Consolidated,  etc.,  Co.  930,  1904. 

v.  Phoenix,  etc.,  Raisin  Co.,  124  22  Western     Wheeled     Scraper 

F.  R.  234,   1903;  United  States  Co.  v.  Gahagan,  152  F.  R.  648, 

Expansion    Bolt    Co.    v.    H.    G.  1907.   (Note:  while  the  principle 

Kroucke  Hardware  Co.,  216  F.  R.  of  law  stated  is  undeniably  cor- 

186,  1914.  rect,  query  as  to  its  application 

20  Smith   v.    Farbenfabriken   of  to  the  facts  in  the  particular  case.) 


474  COURTS,    PARTIES,    CAUSES         [CHAP.    XVII. 

defendant  must  be  within  the  scope  of  the  provisions  <>f 
the  Act  of  March  3,  1807,  above  noted.-'' 

Where  the  jurisdiction  is  not  based  on  habitation,  the 
existence  of  a  regular  and  established  place  of  business  in 
the  district,  at  the  time  the  suit  is  begun,  is  necessary  to 
the  jurisdiction;  though  the  infringement  in  the  district 
may  have  ceased  at  that  time.24  Where  a  manufacturing 
corporation  makes  infringing  articles  in  the  State  where 
it  is  organized  and  exists,  and  sends  those  articles  to  an- 
other State  to  be  there  sold  by  another  corporation  as  its 
agent,  and  where  those  articles  are  thus  sold ;  the  place  of 
business  of  the  selling  corporation  is  a  regular  and  estab- 
lished place  of  business  of  the  manufacturing  corporation. 2r' 
But  a  space  occupied  by  an  exhibitor,  in  an  exposition,. for 
the  purpose  of  showing  articles  to  the  public,  is  not  a 
regular  and  established  place  of  business,  within  the  mean- 
ing of  the  statute.26  • 

Where  a  manufacturing  corporation  maintains  an 
agency  for  the  preliminary  negotiation  of  sales  of  infring- 
ing articles,  it  has  a  regular  and  established  place  of  busi- 
ness; but  if  that  preliminary  negotiation  is  not  followed 
by  any  sale  or  subsequent  use  of  an  infringing  article,  in 
the  district  where  that  agency  is  maintained,  the  District 
Court  for  that  district  has  no  jurisdiction  of  that  corpora- 
tion, on  account  of  that  agency.27    But  if  that  preliminary 

23  Cheatham  Electric  Switch-  F.  R.  588,  1900;  Smith  v.  Farben- 
ing  Device  Co.  v.  Transit  De-  fabriken  of  Elberfeld  Co.,  203 
velopment  Co.,  191  F.  R.  727,     F.  R.  476,  1913. 

1911.  28  L.     E.     Waterman    Co.    v. 

24  Feder  v.  A.  B.  Fiedler  &  Sons,  Parker  Pen  Co.,  100  F.  R.  544, 
116  F.  R.  378,  1902;  Underwood      1900. 

Typewriter    Co.    v.    Fox    Type-  27  Westinghouse      Electric      & 

writer  Co.,  158  F.  R.  476,  1907.  Mfg.  Co.  v.  Stanley  Electric  Mfg. 

25  Thomson-Houston  Electric  Co.,  116  F.  R.  641,  1902;  United 
Co.  v.  Bullock  Electric  Co.,  101  Autographic  Register  Co.  v.  Egry 


CHAP.  XVII.]        courts;  parties,  causes  475 

negotiation  is  followed  by  a  sale  of  an  infringing  article 
outside  of  that  district,  for  subsequent  use  inside  of  that 
district,  the  District  Court  for  that  district  has  jurisdic- 
tion of  that  manufacturing  corporation,  on  the  ground 
that  it  not  only  has  a  regular  and  established  place  of 
business  in  the  district,  but  also  is  chargeable  with  con- 
tributing to  the  infringing  use  of  the  article  in  the  district, 
after  having  sold  it  for  that  purpose,  though  the  sale  was 
consummated  outside  of  the  district.28 

In  W.  S.  Tyler  Co.  against  Ludlow-Saylor  Wire  Co.,28" 
the  Supreme  Court  held  that  where  a  manufacturing 
company  of  another  State  than  that  where  the  suit  is 
brought  employs  a  representative  in  the  State  of  suit, 
paying  him  a  small  salary,  commissions  on  sales  and  travel- 
ling expenses,  the  duty  of  the  representative  being  merely 
to  solicit  orders  and  forward  them  when  received,  to  the 
home  office  for  execution,  does  not  have  a  regular  and  es- 
tablished place  of  business  in  the  district  of  suit.  The 
court  said:  "Guerin  received  and  forwarded  and  his 
principal  accepted  orders  for  goods  which  were  thereafter 
manufactured  and  shipped  by  express  to  the  purchaser 
in  New  York  City.  This  sale  was  consummated  at  St. 
Louis  and  did  not  constitute  an  infringement  of  appellant's 
patent  within  the  district  where  suit  was  brought."  The 
determining  elements  in  the  case  are  considered  to  be 
that  the  "agent"  was  also  employed  by  another  corpora- 
Register  Co.,  219  F.  R.  637,  1915;  cago  Wood  Finishing  Co.,  180 
Tyler  Co.  v.  Ludlow-Saylor  Wire  F.  R.  770,  1910,  where  the  phrase 
Co.,  236  U.  S.  723,  1915;  United  in  question  is  given  a  liberal  in- 
states Envelope  Co.  v.  Transo  terpretation;  Edison  v.  Allis- 
Paper  Co.,  229  F.  R.  576,  1916.        Chalmers  Co.,    191   F.   R.   837, 

28  Westinghouse     Electric     &        1911. 
Mfg.  Co.  v.  Stanley  Electric  Mfg.  2&a  W.  S.  Tyler  Co.  v.  Ludlow- 

Co.,  121  F.  R.  101,  1903.  See  Saylor  Wire  Co.,  236  U.  S.  723, 
Chadeloid  Chemical  Co.  v.  Chi-      1915. 


476  COURTS,    PARTIES,    CAUSES         [CHAP.    XVII. 

(ion  than  the  defendant  to  solicit  orders  to  be  executed 
at  the  home  office  of  the  latter,  and  that  lie  shared  his 
office  expenses  with  the  other  corporation.28'' 

The  provision  of  the  Act  of  March  3,  1897,  c.  395  (29 
Stat.  695),  that  where  the  suit  is  brought  in  a  district 
where  the  defendant  has  a  "regular  and  established  place 
of  business  "  service  of  process  "may  be  made  by  service 
upon  the  agent  or  agents  engaged  in  conducting  such  busi- 
ness "  is  permissive  only,  and  where  the  defendant  is  a 
corporation  service  may  be  made  on  the  corporation  it- 
self if  it  be  found  within  the  district  of  suit.29 

Where  a  defendant  intends  to  deny  habitation,  or  the 
existence  of  a  regular  and  established  place  of  business, 
in  the  district  in  which  a  suit  has  been  begun,  the  proper 
practice  is  a  special  appearance  for  the  purpose,  and  a 
motion  to  set  aside  whatever  service  of  process  may  have 
been  made,  upon  any  person  as  assumed  representative 
of  the  defendant.30  Where  a  defendant  intends  to  deny 
any  infringement  within  the  district  in  which  a  suit  has 
been  begun;  that  denial  may  be  made  by  motion  to  dis- 
miss, unless  such  infringement  is  asserted  in  the  bill. 
And  where  such  infringement  is  asserted  in  the  bill, 
that  denial  may  be  made  by  special  matter  in  the  answer.30" 
If  made  by  special  matter  in  the  answer,  then  the  issue 
of  fact  must  be  settled  by  evidence.  If  that  denial  is 
made  in  an  answer,  it  may  be  presented  to  the  court  by  a 
motion  to  dismiss  the  bill  for  want  of  jurisdiction,  after 
the  complainant  has  taken  his  evidence  in  chief,  and  has 

286  United  States  Envelope  Co.  Gibney,  160  U.  S.  219,  1895;  L.  E. 

v.  Transo  Paper  Co.,  229  F.  R.  Waterman  Co.  v.  Parker  Pen  Co., 

576,  1916.  100    F.    R.    544,    1900;    United 

29  National  Electric  Signalling  States  Seeded  Raisin  Co.  v. 
Co.  v.  Telefunken  Wireless  Tele-  Phcenix  Seeding  Co.,  124  F.  R. 
graph  Co.,  194  F.  R.  893,  1912.  234,  1903. 

30  Interior  Construction  Co.  v.  3°a  Equity  Rule  29. 


CHAP.    XVII. J  COURTS,    PARTIES,    CAUSES  477 

omitted  or  failed  to  prove  infringement  as  having  occurred 
in  the  district  where  the  suit  is  pending.31  For  purposes 
of  jurisdiction  of  a  non-resident  the  infringement  must  be 
actual  and  not  merely  threatened.32  A  voluntary  general 
appearance  by  the  defendant  does  not  relieve  the  plaintiff 
from  proving  the  jurisdictional  facts  if  the  allegations 
concerning  them  are  denied.33 

§  390.  Where  a  district  contains  more  than  one  division, 
every  action  for  infringement  of  a  patent,  which  is  brought 
in  that  district  on  the  ground  of  the  habitation  of  the 
defendant  therein,  must  be  brought  in  the  division  where 
he  resides;  and  where  there  are  two  or  more  defendants 
residing  in  different  divisions  of  a  district,  such  an  action, 
if  brought  against  them  in  that  district,  on  the  ground 
of  their  habitation  therein,  must  be  brought  in  one  of 
those  divisions. 

§  391.  The  Court  of  Claims  is  the  tribunal  which  has 
jurisdiction  of  all  actions  brought  by  owners  of  patent 
rights  against  the  government  of  the  United  States,  for 
compensation  for  the  use  by  the  Government  of  patents 
and  patent  rights  owned  by  individuals.34  Such  suits 
are  subject  to  a  six-year  statute  of  limitations  and  in  the 
absence  of  an  established  royalty  the  claimant  is  entitled 
to  recover  what  a  reasonable  royalty  for  an  express  license 
would  have  been.35  But  it  is  held  that  no  implied  con- 
tract arises  where  the  patentee  is  an  officer  of  the  United 
States  Government  making  the  patent  invention  in  the 
course  of  his  official  duty  at  the  expense  of  the  Govern- 

31  Streat  v.   American  Rubber         34  United  States  v.  Burns,    12 

Co.,  115  F.  R.  634,  1902.  Wallace,  246,  1870;  United  States 

"Gray  v.  Grinberg,  147  F.  R.  v.  Palmer,  128  U.  S.  269,  1888; 

732,  1906.  Act  June  25,  1910,  36  Stat.  851. 

33  Gray  v.  Grinberg,  159  F.  R.  S5  United  States  v.  Berdan  Fire 

138,  1908.  Arms  Co.,  156  U.  S.  569,  1895. 


ITS  COURTS,    PARTIES,    CAUSES         [CHAP.    XVII. 

incut  and  for  the  public  service. M  It  has  been  held  thai 
this  protection,  al  Leasl  as  far  as  a  suit  for  an  injunction 
Is  concerned,  extends  to  an  owner  of  a  hotel  who  has 
purchased  infringing  mail  chutes  and  established  them  in 
his  hotel  and  hence  are  by  the  general  Act  of  Congress, 
under  the  care  and  custody  of  the  United  States.'"  Pre- 
sumably this  holding  applies  only  to  the  particular  chutes 
already  supplied  to  the  Government  and  an  injunction 
might  issue  against  supplying  more,38  at  least  in  the  ab- 
sence of  the  statute  passed  in  1910  permitting  certain 
suits  against  the  Federal  Government  to  be  brought  in 
the  Court  of  Claims.39 

§  392.  What  remedy  a  patentee  has  when  the  Govern- 
ment makes  or  uses  specimens  of  the  patented  invention 
without  his  consent  is  a  question  which  was  long  debated. 
The  United  States  cannot  be  sued  except  where  it  has 
consented  thereto  by  a  statute.  This  question  was,  how- 
ever, set  at  rest  by  the  passage  of  the  Act  of  June  25,  1910, 
36  Statutes,  851,  whereby  the  Court  of  Claims  was  given 
jurisdiction  of  suits  by  owners  of  patents  and  licensees 
for  the  recovery  of  reasonable  compensation  for  the  use 
by  the  Government  of  the  patent  owned  or  licensed.40 

§  393.  Prior  to  the  Act  mentioned  in  the  preceding 
section  there  was  much  debate  as  to  the  personal  liability 
of  an  officer  of  the  United  States  Government  who  was 
chargeable  with  an  unauthorized  use  of  a  patented  inven- 

36  Solomons  v.  United  States,  22  Sons  Ship  &  Engine  Co.,  211  F.  R. 
Court  of  Claims,  342,  1887;  Davis      124,  1914. 

v.    United   States,    23   Court   of          39Act  June   25,    1910,   c.   423 
Claims,  334,  1888.  (36  Stat.  851). 

37  Cutler    v.    Maryland    Hotel         See  Section  157. 

Co.,  168  F.  R.  931,  1909.  40See     Schillinger    v.     United 

38  International  Curtis  Marine  States,  155  U.  S.  169,  1894,  de- 
Turbine  Co.  v.  William  Cramp  &      cided  before  the  Act  of  June  25, 

1910. 


CHAP.    XVII.]  COURTS,    PARTIES,    CAUSES  479 

tion  for  the  benefit  of  the  ( rovernment.  This  question  is 
considered  more  fully  in  Section  157  of  this  book.  In 
brief,  however,  it  may  be  stated  that  it  is  no  longer  the 
law  that  an  action  will  lie  against  agents  of  the  Govern- 
ment under  such  circumstances.41 

§  394.  The  plaintiff  or  complainant  in  an  action  based 
on  an  infringement  of  a  patent  may  be  the  patentee,  or  the 
sole  assignee  of  that  patent ;  or  any  grantee  under  a  patent 
may  sue  alone,  for  any  infringement  committed  within  his 
territory.42  And  the  owner  of  an  equitable  title  to  the 
patent  may  sue  in  equity  if  the  defendant  is  the  patentee 
or  Ins  assignee.43  And  the  plaintiff  or  complainant  may  be 
a  partnership,  as  well  as  a  person  or  a  corporation;  and 
may  sue  in  the  partnership  name,  though  that  name 
is  an  artificial  one,  quite  unlike  the  names  of  the 
partners.44 

It  is  not  necessary  for  the  plaintiff,  in  an  action  at  law, 
to  own  any  present  interest  in  the  patent  at  the  time  he 
brings  his  action.  It  is  enough  if  he  was  the  patentee, 
assignee,  or  grantee  of  the  rights  infringed,  at  the  time  the 
infringement  sued  upon  was  committed.45  But  this  rule 
does  not  generally  apply  to  actions  in  equity,  for  such 
actions  are  generally  dependent  upon  an  injunction,  and 
no  injunction  can  be  granted  to  restrain  future  infringe- 
ments of  a  patent,  on  the  suit  of  a  person  who  has  no 
interest  in  the  patent  threatened  to  be  infringed. 46    Though 

41  Crozier  v.  Krupp,  224  U.  S.  Portable  Lighting  Co.,  164  F.  R. 
290,  1912.  60,  1908. 

42  Revised  Statutes,  Section  44  Fruit  Cleaning  Co.  v.  Fresno 
4919;  Wilson  v.  Rousseau,  4  How-  Home  Packing  Co.,  94  F.  R.  847, 
ard,  646,  1846;  Stein  v.  Goddard,  1899. 

1  McAlister,  82,  1856;  Seibert  Oil         45  Moore  v.  Marsh,  7  Wallace, 

Cup  Co.  v.  Beggs,  32  F.  R.  790,  515,  1868. 

1887.  46  Waterman  v.  Mackenzie,  138 

43  Prest-O-Lite    Co.    v.    Avery  U.  S.  255,  1891. 


ISO  COURTS,    PARTIES,    CAUSES         [CHAP.    XVII. 

where  a  complainant  owns  a  patenl  infringed,  when  he 
files  his  l>ill  for  an  injunction  and  a  money  recovery, 
jurisdiction  will  not  lapse  when  he  assigns  the  future  of 
his  patent.17 

$  395.  Actions  ;it  law  brought  by  assignees  or  grantees, 
tor  infringements  committed  prior  to  the  time  they  ob- 
tained title,  must,  according  to  the  common  law,  be 
brought  in  the  name  of  the  person  who  held  the  legal  title 
to  the  patent  right  when  and  where  it  was  infringed  by 
the  defendant.  This  rule  was  not  abrogated  by  the  statute 
which  permits  suits  to  be  brought  by  assignees;  because 
the  assignees  which  are  contemplated  by  that  statute, 
are  assignees  of  patents  and  not  assignees  of  rights  of 
action  under  patents.48  No  cause  of  action  for  damages 
against  an  infringer  lies  in  favor  of  an  assignee  of  a  mere 
claim  for  damages  for  infringement.  Such  an  assignee  is 
not  a  "  party  interested,  either  as  patentee,  assignee  or 
grantee."49  Nor  may  such  an  assignee,  or  at  any  rate 
one  who  has  merely  the  right  to  share  in  moneys  collected 
from  infringement,  be  a  party  to  a  suit  in  equity  for  an 
injunction,50  unless  as  owner  of  the  patent  who  was  granted 
an  exclusive  license  but  who  has  reserved  an  interest  in 
damages  to  be  recovered  from  infringers  and  also  has  the 
right  to  cancel  the  license  under  certain  conditions.  The 
latter  right  is  held  to  entitle  him  to  bring  such  a  suit, 
even  if  the  former  would  not  be  sufficient.51 

An  action  in  equity,  if  maintainable  at  all  in  such  a  case, 
may  be  brought  in  the  name  of  the  assignee;  and  such  an 

47  New  York  Belting  Co.  v.  49  Webb  v.  Goldsmith,  127  F.  R. 
New  Jersey  Rubber  Co.,  47  F.  R.  572,  1904;  Revised  Statutes,  Sec- 
505,  1891.  tion4919. 

48  Moore  v.  Marsh,  7  Wallace,  50  Kaiser  v.  General  Phonograph 
515,  1868;  Armstrong,  Whitworth  Supply  Co.,  171  F.  R.  432,  1909. 
&  Co.  v.  ^Norton,  15  App.  D.  C.  5I  Kaiser  v.  General  Phonograph 
232,  1899.  Supply  Co.,  171  F.  R.  432,  1909. 


CHAP.    XVII.]  COURTS.    PARTIES,    CAUSES  481 

action  will  be  maintainable  where  the  suit  is  based  on  in- 
fringements and  threatened  infringements,  committed  after 
the  complainant  obtained  title,  as  well  as  upon  infringe- 
ments committed  before  that  event.52  An  action  in  equity 
will  also  be  maintainable  in  such  a  case,  if  the  assignor  of 
the  right  of  action  was  a  corporation,  and  has  been  dis- 
solved or  has  expired;5'5  or  if  for  any  reason  it  is  impossible 
for  the  assignee  of  the  right  of  action  to  sue  in  the  name  of 
the  assignor.54 

Where  the  assignor  is  dead  at  the  time  the  assignee 
desires  to  bring  an  action  at  law,  and  where  no  legal 
representative  of  the  assignor  exists,  or  is  likely  to  exist 
unless  the  appointment  of  one  is  obtained  for  the  special 
purpose  of  using  his  name  as  nominal  plaintiff  in  the  as- 
signee's suit,  it  would  seem  no  great  stretch  of  equity 
jurisdiction  to  allow  the  assignee  to  file  a  bill  in  his  own 
name,  and  thus  avoid  the  useless  and  expensive  circuity 
of  compelling  him  first  to  secure  the  appointment  of  an 
administrator,  and  then  to  bring  an  action  at  law  in  the 
name  of  the  latter.  No  principle  adverse  to  such  a  pro- 
ceeding was  perceived  by  Chief  Justice  Marshall,  when, 
in  a  similar  case  of  expensive  circuity  at  law,  the  more 
direct  and  less  expensive  methods  of  equity  were  invoked 
before  him.55 

§  396.  Where  a  patentee,  assignee,  or  grantee,  who  was 
entitled  to  sue  for  an  infringement  of  a  patent,  died  before 
beginning  an   action   thereon,   such  an   action   may  be 

82  Dibble  v.  Augur,  7  Blatch.  86,  Packer  Co.  v.  Eaton,  12  F.  R.  870, 

1869;  Henry  v.  Stove  Co.,  2  Bann.  1882. 

&  Ard.  224,  1876;  Gordon  v.  An-  53  Lenox  v.  Roberts,  2  Wheaton, 

thony,  16  Blatch.  234,  1879;  Mer-  373,  1817. 

riam  v.  Smith,  11  F.  R.  589,  1882;  54  Hayward    v.    Andrews,    106 

Shaw  v.  Lead  Co.,  11  F.  R.  715,  U.  S.  675,  1882. 

1882;     Consolidated     Oil     Well  "Riddle     v.     Mandeville,     5 

Cranch,  329,  1809. 


182  COURTS,    PARTIES,    CAUSES         [CHAP.    XVII. 

brought  by  his  executor  or  administrator,56  upon  his  ful- 
filling the  conditions  and  giving  the  guarantees  of  fidelity 
and  solvency  required  by  the  law  of  the  State  wherein  the 
court  is  established  in  which  the  action  is  proposed  to  be 
brought.57  But  it  is  not  certain  that,  when  beginning  a 
patent  action  in  a  Federal  court  in  a  State  other  than  that 
of  Ins  appointment,  an  executor  or  administrator  must 
conform  to  the  conditions,  or  give  the  guarantees,  pre- 
scribed by  the  local  laws/*8  Whether  the  various  State 
laws,  relevant  to  foreign  executors  or  administrators  suing 
in  State  courts,  are  binding  in  such  cases  as  these,  is  a 
point  upon  which  there  appears  to  be  a  conflict  of  author- 
ity. The  cases  last  cited  appear  to  support  the  negative 
of  the  question,  while  those  cited  just  before  seem  to  sus- 
tain the  affirmative  view.  It  is  possible  that  a  distinction 
may  be  drawn  on  this  point  between  actions  based  on 
patents  and  actions  arising  out  of  local  law  and  brought 
into  Federal  courts  on  grounds  of  diverse  citizenship. 
If  that  distinction  is  found  to  be  important,  it  may  lead 
to  a  decision  that  executors  and  administrators  may 
begin  and  prosecute  patent  cases  in  Federal  courts  in 
States  other  than  that  of  their  appointment,  without  any 
regard  to  the  probate  or  other  analogous  laws  of  those 
States.  If  it  is  held  otherwise,  then  the  laws  of  the  States 
relevant  to  the  conditions  upon  which  foreign  executors 
or  administrators  are  permitted  to  sue  in  their  courts, 
will  require  the  attention  of  the  practitioner  in  such  cases. 
In  some  States  those  conditions  amount  to  local  probate, 

58  May  v.  County  of  Logan,  30         58  Hodge   v.    Railroad   Cos.,   4 

F.  R.  253,  1887.  Fisher,  162,  1870;  Northwestern 

57  Rubber  Co.  v.  Goodyear,  9  Fire  Extinguisher  Co.  v.  Philadel- 

Wallace,  791,  1869;  Wilkins  v.  El-  phia    Fire    Extinguisher    Co.,    1 

lett,  108  U.  S.  256,  1882;  Picquet  Bann.  &  Ard.  177,  1874. 
v.  Swan,  3  Mason,  472,  1824. 


(HAP.    XVII.]  COURTS,    PARTIES,    CAUSES  t83 

and  in  others  they  amount  to  no  more  than  the  giving  of 
a  bond  for  costs.  But  whether  onerous  or  easy,  and 
whether  necessary  or  unnecessary  to  be  regarded  in  patent 
cases,  an  omission  to  regard  them  cannot  be  availed  of  by 
a  defendant,  unless  availed  of  in  his  pleadings.59 

§  397.  Where  an  executor  or  administrator  of  a  deceased 
patentee,  or  assignee  or  grantee  of  a  patent  right,  assigns 
that  right  to  another,  or  assigns  to  another  a  right  of 
action  for  its  infringement,  that  other  can  sue  thereon  in 
any  State,  without  any  proceedings  in  the  nature  of  local 
probate,  provided  he  can  sue  in  his  own  name.60  Whether 
he  can  sue  in  his  own  name  will  depend  upon  whether  he 
is  entitled  to  an  injunction;  or  if  not  entitled  to  an  injunc- 
tion, it  will  depend  upon  whether  equity  can  take  juris- 
diction on  some  other  ground;  or  if  not  entitled  to  sue  in 
equitjr  at  all,  it  will  depend  upon  whether  the  laws  of  the 
particular  State  authorize  assignees  of  rights  of  action  to 
bring  actions  at  law  in  their  own  respective  names.61 

§  398.  Patentees  and  other  persons  entitled  to  bring 
actions  for  infringements  of  patents  may  appoint  attorneys 
in  fact  to  bring  those  actions  in  the  names  of  the  ap- 
pointers;  but  not  in  the  names  of  the  attorneys  in  fact.62 

§  399.  Owners  in  common  of  patent  rights  must  sue 
jointly  for  their  infringement,  or  the  defendant  may  plead 
in  abatement  or  demur,63  or  in  suit  in  equity,  move  to  dis- 
miss.   This  rule  applies  where  a  patentee  has  assigned  an 

59  Rubber  Co.  v.  Goodyear,  9  May  v.  County  of  Logan,  30  F.  R. 

Wallace,  791,  1869.  253,  1887. 

80  Harper   v.   Butler,   2  Peters,  61  May  v.  County  of  Logan,  30 

238,  1829;  Trecothick  v.  Austin,  F.  R.  253,  1887. 
4    Mason,    36,    1825;    Leake    v.         62  Goldsmith  v.  Collar  Co.,  18 

Gilchrist,  2  Devereaux   (N.  C),  Blatch.  82,  1880. 
73,    1829;   Peterson  v.   Chemical  63  Van  Orden  v.  Nashville,  67  F. 

Bank,  32  N.  Y.  21,  1865;  Riddick  R.332, 1895;  Postal  Tel.  Cable  Co. 

v.  Moore,  65  N.  C.  382,   1871;  v.  Netter,  102  F.  R.  691,  1900. 


|X|  COURTS,    PARTIES,    CAUSES         [CHAP.    Wll. 

undivided  part  of  his  patent,84  and  also  to  cases  where 
the  owner  of  the  patent  has  granted  an  undivided  interest 
therein,  in  that  part  of  the  territory  of  the  United  States 
wherein  the  infringement  sued  upon  was  committed. 
In  the  first  of  these  cases  the  action  must  be  brought  by 
the  patentee  and  assignee  jointly;  and  in  the  other  case  it 
must  be  jointly  brought  by  the  owner  of  the  patent  and  his 
grantee.  Indeed,  the  rule  necessarily  applies  to  every  case 
where  a  plurality  of  persons  own  the  undivided  interest  in  a 
patent  right,  whether  in  the  whole,  or  only  in  a  part  of  the 
territory  of  the  United  States.  And  it  has  been  held  in  one 
case,  that  the  owner  of  a  patent  right  in  a  part  of  the  ter- 
ritory of  the  United  States,  may  join  with  the  owner  of  the 
same  patent  right  in  another  part  of  that  territory,  in 
suing  for  infringement  of  the  patent  in  the  territory  of 
the  latter,  on  the  ground  that  all  the  owners  of  territorial 
rights  under  the  patent  are  interested  in  having  it  sus- 
tained.65 But  there  is  no  occasion  for  a  person  who  has 
only  an  interest  in  the  proceeds  of  a  patent,  without  hav- 
ing any  title  in  the  patent  itself,  to  join  in  a  suit  for  its 
infringement.66 

§  400.  Licensees  under  patents  cannot  bring  actions  for 
their  infringement.67  Where  a  person  has  received  an  ex- 
clusive license  to  use  or  to  sell  a  patented  invention  within 

64  Moore  v.  Marsh,  7  Wallace,  dridge,  1  Wallace,  Jr.,  337,  1849; 

515,  1868;  Waterman  v.  Macken-  Potter  v.  Holland,  4  Blatch.  206, 

zie,  138  U.  S.  255,  1891;  Dick  v.  1858;     Sanford     v.     Messer,     1 

Struthers,  25  F.  R.  104,  1885.  Holmes,  149,  1872;  Nelson  v.  Mc- 

85  Otis  Mfg.  Co.  v.  Crane  Mfg.  Mann,  4  Bann.  &  Ard.  203,  1879; 

Co.,  27  F.  R.  558,  1886.  Gamewell  Telegraph  Co.  v.  Brook- 

«■  Bogart  v.   Hinds,   25  F.   R.  lyn,  14  F.  R.  255,  1882;  Ingalls  v. 

485,  1885.  Tice,  14  F.  R.  297,  1882;  Wilson  v. 

67  Gayler  v.  Wilder,  10  Howard,  Chickering,  14  F.  R.  917,  1883; 

477,  1850;  Paper-Bag  Cases,  105  De  Forest  v.  Collins  Wireless  Tel- 

U.  S.  766,  1881;  Blanchard  v.  El-  ephone  Co.,  174  F.  R.  821,  1909. 


CHAP.    XVII.]  COURTS,    PARTIES,    CAUSES  485 

a  specified  territory,  all  actions  at  law  against  persons  who, 
without  right,  have  done  anything  covered  by  the  license, 
must  be  brought  in  the  name  of  the  owner  of  the  patent 
right,  but  generally  for  the  use  of  the  licensee;68  and  all 
actions  in  equity  must  be  brought  by  the  owner  of  the 
patent  right  and  the  exclusive  licensees  suing  together  as 
joint  complainants;69  even  where  the  license  is  oral,70  or 
is  an  incident  of  a  partnership.71 

But  the  holder  of  a  license  less  than  exclusive  must  not 
join  in  an  action  in  equity  for  an  infringement  of  the 
patent  under  which  he  is  licensed,72  even  where  the  in- 
fringement consisted  in  making  and  selling  one  form  of 
the  patented  invention,  which  the  licensee  was  exclusively 
licensed  to  make  and  sell.73  And  an  exclusive  licensee 
who  has  assigned  his  license,  must  not  join  in  an  action  in 
equity  for  an  infringement  of  the  patent,  even  against  a 
defendant  who  infringed  before  the  license  was  assigned; 
for  such  a  person  is  not  entitled  to  pray  for  an  injunction, 
and  therefore  is  not  entitled  to  invoke  a  court  of  equity 
to  decree  a  money  recovery  for  past  infringement. 

Actions  at  law  brought  in  the  name  of  the  owner  of  a 
patent  right,  but  actually  begun  by  an  exclusive  licensee, 
may  be  maintained  by  the  latter,  even  against  the  will 

«8Littlefield  v.  Perry,  21  Wal-  W.  R.  Ostrander  &  Co.,  190  F.  R. 

lace,    223,    1874;    Goodyear    v.  199,  1911. 

McBurney,  3  Blatch.  32,   1853;  70  Sharpless  v.  Moseley  &  Stod- 

New     York    Filtration    Co.    v.  dard  Mfg.  Co.,  75  F.  R.  595, 1896. 

City  of  Sullivan,  111  F.  R.  181,  71  Chisholm    v.    Johnson,    106 

1901.  F.  R.  213,  1901. 

69  Waterman  v.  Mackenzie,  138  72  Blair  v.  Lippincott  Glass  Co., 

U.   S.   255,    1891;   Hammond  v.  52  F.   R.   226,    1892;  American 

Hunt,  4  Bann.  &  Ard.  113,  1879;  Graphaphone  Co.  v.  Walcutt,  87 

Huber  v.  Sanitary  Depot,  34  F.  R.  F.  R.  557,  1898. 

752,  1888;  Bredin  v.  Solmson,  145  73  Pope  Mfg.  Co.  v.  Clark,  46 

F.  R.  944,  1906.    See  Havens  v.  F.  R.  792,  1891. 


486  COURTS,    PARTIES,    CAUSES         [CHAP.    XVII. 

of  the  nominal  plaintiff.74  And  where  an  exclusive  licensee 
brings  an  action  in  equity  in  the  name  of  himself  and  the 
owner  of  the  patent  right,  that  action  may  he  maintained 
without  the  co-operation  and  even  againsl  the  objection 
of  the  latter.75  The  fact  thai  the  owner  has  been  enjoined 
in  another  circuit  from  maintaining  suits  for  infringement 
on  the  patent  in  suit  does  not  relieve  the  owner  from  such 
liability  to  be  joined  as  plaintiff.70 

Where  the  owner  of  a  patent  is  himself  an  infringer  of  a 
licensee's  exclusive  right  to  use  or  to  sell  the  invention 
covered  thereby,  no  action  at  law  can  remedy  the  wrong. 
The  licensee  cannot  bring  such  an  action  in  his  own  name 
in  that  case,  any  more  than  in  another;  and  he  cannot  sue 
in  the  name  of  the  wrongdoer,  for  he  would  thus  make  the 
latter  both  plaintiff  and  defendant.  Such  a  state  of  facts 
constitutes  such  an  impediment  to  an  action  at  law  as 
authorizes  the  licensee  to  sue  the  owner  of  a  patent  or  one 
who  purchased  the  patent  with  knowledge  of  the  license 
in  a  court  of  equity.77  And  a  stranger  to  the  title  who 
joined  in  the  infringement,  may  be  joined  with  the  owner 
as  a  defendant.78 

74  Goodyear  v.  Bishop,  4  Blatch.  76  Hurd  v.  James  Goold  Co.,  203 
438,  1860.  F.  R.  998,  1913. 

75  Brush-Swan  Electric  Light  "  Littlefield  v.  Perry,  21  Wall. 
Co.  v.  Electric  Co.,  48  F.  R.  224,  223,  1874;  Root  v.  Railway  Co., 
1891;  Brush  Electric  Co.  v.  Elec-  105  U.  S.  216,  1881;  Rapp  v. 
trie  Co.  of  San  Jose,  49  F.  R.  73,  Kelling,  41  F.  R.  792,  1890; 
1892;  Brush  Electric  Co.  v.  Cal-  Adriance  v.  McCormick  Mach. 
ifornia  Electric  Co.,  52  F.  R.  945,  Co.,  55  F.  R.  290,  1893;  56  F.  R. 
1892;  Excelsior  Wooden-Pipe  Co.  918,  1893;  Smith  v.  Ridgely,  103 
v.  Allen,  104  F.  R.  553,  1900;  F.  R.  876,  1900;  New  York  Pho- 
Chisholm  v.  Johnson,  106  F.  R.  nograph  Co.  v.  National  Pho- 
212,  1901;  Excelsior  Wooden-Pipe  nograph  Co.,  144  F.  R.  404, 
Co.  v.  City  of  Seattle,  117  F.  R.  1906. 

140,  1902;  Hurd  v.  James  Goold  78  Waterman    v.    Shipman,    55 

Co.,  203  F.  R.  998,  1913.  F.  R.  986,  1893. 


CHAP.    XVII.]  COURTS,    PARTIES,    CAUSES  487 

Where  an  exclusive  licensee,  who  pays  royalties  in  pro- 
portion to  the  extent  of  his  use  or  his  sales  of  the  patented 
invention,  allows  infringers  to  use  or  to  sell  that  invention 
without  interference  from  him,  the  owner  of  the  patent 
right  may  sue  those  infringers  in  his  own  name  and  for 
his  own  use.79 

§  401.  The  defendant  in  an  action  for  an  infringement 
of  a  patent  may  be  a  natural  person,  or  a  partnership. 
A  private  corporation  may  also  be  held  liable  as  defendant 
in  such  an  action.80  And  a  receiver,  appointed  by  a  State 
court  for  an  infringing  corporation,  may  be  sued  for  its 
infringement  or  for  his  own  infringement  as  receiver, 
without  the  consent  of  the  State  court  which  appointed 
him.81  And  so  with  trustees  in  bankruptcy  and  assignees 
for  the  benefit  of  creditors.82  Among  public  corporations, 
the  liability  of  a  city  for  infringing  a  patent  has  been 
affirmed,83  and  that  of  a  county  has  sometimes  been  af- 
firmed and  sometimes  denied.84  It  follows  of  course  that 
an  individual  cannot  escape  liability  for  infringement  by 
showing  that  the  infringing  articles  were  supplied  under 
contract  to  a  city  even  though  the  infringing  articles  were 

79  Still  v.  Reading,  20  O.  G.  ican  Graphophone  Co.  v.  Pickard, 
1026,  1881.  201  F.  R.  546,  1912. 

80  York  &  Maryland  Line  Rail-  83  Bliss  v.  Brooklyn,  4  Fisher, 
road  Co.  v.  Winans,  17  Howard,  596,  1871;  Asbestine  Mfg.  Co.  v. 
30,  1854.  Hepp,  39  F.  R.  326,  1889;  City  of 

81  Hupfeld  v.  Automaton  Piano  Akron  v.  Bone,  221  F.  R.  944, 1915. 
Co.,  66  F.  R.  789,  1895;  Union  Si  Jacobs  v.  Hamilton  County,  4 
Switch  &  Signal  Co.  v.  Philadel-  Fisher,  81,  1862;  May  v.  County 
phia  &  Reading  Railroad  Co.,  69  of  Mercer,  30  F.  R.  246,  1887; 
F.  R.  833,  1895.  May  v.  County  of  Juneau,  30  F.  R. 

82  United  Wireless  Telegraph  241,  1887;  May  v.  County  of 
Co.  v.  National  Electric  Signalling  Logan,  30  F.  R.  260,  1887;  May  v. 
Co.,  198  F.  R.  385,  1912;  Amer-  County  of  Ralls,  31  F.  R.  473, 

1887. 


188  COURTS,    PARTIES,   CAUSES         [CHAP.    \\n. 

specified  in  the  call  for  bids.86  If  any  distinction  exists 
between  a  city  and  a  county,  it  is  founded  on  the  facl 
that  cities  are  created  and  exist  mainly  for  the  special 
use  of  the  people  who  compose  them;  while  counties  are 
subdivisions  of  States,  made  for  the  purposes  of  political 
organization,  and  civil  and  judicial  administration.86 
The  same  reasons,  if  valid,  would  indicate  that  organized 
villages  are  generally  liable  for  infringements,  while  ordi- 
nary townships  are  not.  The  general  rule  on  the  subject 
would  then  appear  to  be  that  cities  and  villages  are  liable 
for  infringements  of  patents,  unless  the  charters  or  statutes 
which  created  or  which  regulate  them,  otherwise  require 
or  provide,  while  counties  and  townships  are  not  so  liable 
unless  they  are  made  so  by  the  legislative  power  which 
called  them  into  being.87  School  districts  probably  fall 
in  the  same  category  as  townships  in  respect  to  this  sort 
of  liability.88  No  State  can  be  sued  for  any  infringement 
of  a  patent  without  its  statutory  consent.89  And  it  has 
been  held  that  a  State  officer  is  not  responsible  for  any 
infringement  of  a  patent  which  occurs  in  any  State  work 
conducted  by  him,  where  he  did  not  direct  the  infringe- 
ment to  be  committed,  and  did  not  know  the  fact  of  in- 
fringement till  after  it  was  done.90 

§  402.  Natural  persons  cannot  escape  liability  for  their 
infringements  of  patents  on  the  ground  that  they  are 

85  Consolidated  Contract  Co.  v.  29  F.  R.  473, 1886;  May  v.  County 

Hassan  Paving  Co.,   227  F.   R.  of  Cass,  30  F.  R.  762,  1887. 

436, 1915.  *»  Wilson  v.  School  District,  32 

88  Ward  v.  County  of  Hartford,  New  Hampshire,  118,  1855. 

12  Connecticut,  406,  1838;  Com-  89  Eleventh  Amendment  to  the 

missioners  of   Hamilton  County  Constitution  of  the  United  States ; 

v.   Mighels,   7   Ohio   State,    118,  Hans  v.  Louisiana,  134  U.  S.  17, 

1857.  1890. 

87  May  v.  County  of  Buchanan,  90  Standard  Fireproofing  Co.  v. 

Toole,  122  F.  R.  652,  1903. 


CHAP.    XVII.]  COURTS,    PARTIES,    CAUSES  489 

minors  or  married  women.91  A  minor  is  not  less  liable  to 
an  action  because  the  act  of  infringement  was  done  at  the 
command  of  his  father;  °2  but  if  a  married  woman  commits 
an  infringement  in  the  presence  of  her  husband,  she  is  not 
liable  to  an  action  therefor,  unless  it  can  be  shown  that  she 
did  it  without  his  influence  or  consent.93  In  the  absence 
of  such  evidence,  the  husband  is  alone  liable  for  the  torts 
of  the  wife  which  are  committed  in  his  presence;94  or  under 
his  direction;95  and  for  the  infringements  which  are  com- 
mitted jointly  by  both.96 

§  403.  An  agent  or  salesman  who  sells  or  leases  speci- 
mens of  a  patented  thing,  is  liable  as  an  infringer  for  so 
doing.07  The  foreman  of  a  factory  is  liable  for  infringe- 
ments done  under  his  supervision.98  And  any  employed 
person  who  has  derived  a  distinct  and  independent  benefit 
from  infringing  a  patent  under  the  direction  of  his  em- 
ployer, is  himself  liable  to  an  action  based  on  that  infringe- 
ment.99 But  a  mechanic  who,  when  working  for  wages, 
makes  or  uses  a  patented  thing,  or  uses  a  patented  process, 
at  the  command  of  his  employer,  is  not  liable  to  an  action 
at  law,  on  that  account,100  though  he  may  doubtless  be 
restrained  by  an  injunction  from  continuing  such  making 

91  Cooley  on  Torts,  Chapter  IV.  Blatch.  53, 1876;  Steiger  v.  Heidel- 

92  Humphreys  v.  Douglass,  10  berger,  4  F.  R.  455,  1880;  Cramer 
Vermont,  71,  1838;  Scott  v.  Wat-  v.  Fry,  68  F.  R.  207,  1895;  Graham 
son,  46  Maine,  362,  1859.  v.  Earl,  82  F.  R.  743,  1897. 

93  Bishop's  Law  of  Married  98  Cahoone  Mfg.  Co.  v.  Harness 
Women,  Volume  2,  Section  258.  Co.,  45  F.  R.  584,  1891. 

94  Bishop's  Law  of  Married  99  Palmer  v.  Landphere,  99  F.  R. 
Women,  Volume  1,  Section  43.  568,  1900;  and  118  F.  R.  52,  1902. 

95  American  Bell  Telephone  Co.  I0°  Delano  v.  Scott,  Gilpin,  498, 
v.  Cushman,  57  F.  R.  844,  1893.  1834;  United  Nickel  Co.  v.  Worth- 

96  Green  v.  Austin,  22  O.  G.  683,  ington,  13  F.  R.  392,  1882;  Young 
1882.  v.  Foerster,  37  F.  R.  203,  1889; 

97  Potter  v.  Crowell,  3  Fisher,  Graham  v.  Earl,  82  F.  R.  742, 
112,   1866;   Maltby  v.  Bobo,   14  1897. 


490  COURTS,    PARTIES,    CAUSES         [CHAP.    XVII. 

or  using;  ""  provided  his  employer  is  also  subject  to  be 
thus  rest  rained.1"'-  A  decree  for  an  account  of  profits 
would  not  be  proper  in  such  a  case,  because  a  mechanic 
cannot  be  said  to  make  any  profits  from  such  an  infringe- 
ment. Nor  would  a  decree  for  damages  be  any  more 
proper  in  an  action  in  equity,  than  would  a  judgment 
for  damages  in  an  action  at  law. 

While  it  cannot  be  so  stated  as  a  matter  of  law,  it  has 
been  remarked  that  the  class  of  persons  described  in  the 
foregoing  paragraph,  when  sued  for  infringement  by  their 
former  employers,  are  not  entitled  to  be  indulged  in  pre- 
sumptions of  fact  to  which  they  are  not  entitled  by  rule 
of  law.103 

§  404.  Whoever  directs  or  requests  another  to  infringe 
a  patent,  is  himself  liable  to  an  action  for  the  resulting 
infringement,  on  the  principle  that  what  one  does  by 
another  he  does  by  himself.104  So,  also,  if  an  infringement 
is  committed  by  A.  B.  for  the  benefit  of  C.  D.,  but  with- 
out the  knowledge  or  authority  of  the  latter,  the  latter 
will  still  be  liable  as  an  infringer,  if  he  approves  the  tort 
after  its  commission.105  An  infringement  which  is  com- 
mitted by  an  employee  in  the  regular  course  of  his  em- 
ployer's business  will  also  render  the  latter  liable  to 
an  action,  even  if  the  employer  forbade  the  acts  which 
constituted    the    infringement,106    or    even    if    the    em- 

101  Goodyear  v.  Mullee,  5  104  Green  v.  Gardner,  22  O.  G. 
Blatch.  437,  1867;  Regent  Mfg.  683,  1882;  Chisholm  v.  Johnson, 
Co.  v.  Penn.  Electrical  &  Mfg.  Co.,      106  F.  R.  207,  1901. 

121  F.  R.  80,  1902.  105See    Judson    v.     Cook,     11 

102  Boston  Lasting-Mach.  Co.  v.  Barbour  (N.  Y.),  642,  1852; 
Woodward,  82  F.  R.  98,  1897.  Allred  v.  Bray,  41  Missouri,  484, 

103  Brunswick  Refrigerating  Co.  1867. 

v.  Wolf,  Sayer  &  Heller,  222  F.  R.  "»  See  Philadelphia  &  Reading 

916,  1915;  Spirella  Co.  v.  Unbone  Railroad  Co.  v.  Derby,  14  How- 
Corset  Co.,  180  F.  R.  470,  1910.        ard,  468,  1852. 


CHAP.    XVII.]  COURTS,    PARTIES,    CAUSES  491 

ployer  did  not  know  that  such  was  the  character  of  those 
acts.107 

§  405.  It  is  a  general  principle  of  law,  that  whoever 
does  an  act  which  naturally  causes  another  to  commit  a 
tort,  is  himself  liable  to  an  action  therefor. 108  For  example, 
if  A.  B.  unlawfully  makes  a  specimen  of  a  patented  thing, 
and  sells  it  to  C.  D.,  a  man  whose  business  it  is  to  use 
things  of  that  class,  there  is  no  injustice  in  holding  the 
former  responsible,  not  only  for  his  own  illegal  making 
and  selling,  but  also  for  the  illegal  using  committed  by  the 
latter,  for  that  making  and  selling  naturally  resulted  in  that 
using.  On  the  other  hand,  if  E.  F.,  a  merchant,  gives 
G.  H.,  a  manufacturer,  an  order  for  a  quantity  of  articles 
which  may  be  made  either  with  or  without  a  particular 
patented  process  or  machine,  and  if  G.  H.  makes  those  ar- 
ticles with  that  machine  or  process,  it  is  clear  that  E.  F; 
is  not  liable  for  that  unlawful  making.109  But  where  the 
articles  can  be  made  only  by  infringing  a  patent,  any 
merchant  who  causes  them  to  be  made  for  him  is  liable 
to  an  injunction  restraining  him  from  a  continuation  of 
his  conduct.110  And  a  person  who  makes  plans  for  infring- 
ing machinery,  or  other  subject  of  a  patent,  and  obtains 
bids  for  its  manufacture,  and  receives  compensation  for 
work  in  its  erection,  is  liable  as  infringer  of  the  patent 
on  the  structure  thus  produced.111 

§  406.  Where  several  persons  co-operate  in  any  infringe- 

107  Wooster  v.  Marks,  17  Blatch.  109  Keplinger  v.  De  Young,  10 
368,  1879;  McKnight  t>.  McNiece,  Wheaton,  358,  1825;  Brown  v. 
64  F.  R.  116,  1894.  District  of  Columbia,  3  Mackey, 

108  Guille  v.  Swan,  19  Johnson  502,  1884. 

(N.    Y.),    381,    1822;    Brooks   v.  no  Welsbach  Light  Co.  v.  Free- 

Ashburn,  9  Georgia,  297,   1851 ;  man,  100  F.  R.  298,  1900. 

Lewis  v.  Johns,  34  California,  629,  m  Risdon  Iron  &  Locomotive 

1868;  Smith  v.  Felt,  50  Barbour  Works  v.  Trent,  92  F.   R.  390, 

(N.  Y.),  612,  1868.  1899. 


192  COURTS,    PARTIES,    CAUSES         [CHAP.    XVII. 

nieiit,  all  those  persons  are  liable  therefor  as  contributors 
thereto.112  In  that,  as  in  all  cases  of  torts  for  which  sev- 
eral persons  are  liable,  all  may  be  sued  jointly,  or  any  of 
them  may  be  sued  alone.118  But  where  a  patentee  sues 
one  of  several  joint  infringers  collusively,  for  the  purpose 
of  getting  a  mutual  advantage  over  another  joint  infringer, 
the  court,  on  learning  the  facts,  will  dismiss  the  case.11 ' 

So,  also,  an  action  may  be  brought  against  several 
joint  defendants,  and  sustained  against  such  of  them  as 
the  evidence  shows  to  be  liable,  even  though  not  sustained 
against  all.11 5  Separate  acts  of  infringement  of  the  individ- 
ual defendants  cannot,  however,  form  the  basis  of  recovery 
in  such  suit. !  16  Where  an  action  at  law  is  sustained  against 
several  joint  infringers,  the  judgment  will  be  entered 
against  all,  regardless  of  whether  the  benefits  of  the  in- 
fringement were  confined  to  part  of  them,  or  extended  to 
the  whole;  117  though  only  one  payment  can  be  enforced;  118 
and  a  decree  for  profits,  in  an  action  in  equity,  will  be 
entered  only  against  those  of  the  defendants  who  are 
proved  to  have  actually  realized  profits  from  the  infringe- 
ment.119 

§  407.  Contributory  infringement  is  intentional  aid 
or  co-operation  in  transactions,  which  collectively  con- 
stitute complete  infringement.     For  example:  where  a 

112  Chisholm  v.  Johnson,  106  m  Reutgen  v.  Kanowr.s,  1 
F.  R.  209,  1901.  Washington,  172,  1804. 

113  Jennings  v.  Dolan,  29  F.  R.  116  Edison  v.  Allis-Chalmers  Co., 
862,  1887;  Bray  v.  Denning,  56  191  F.  R.  837,  1911;  contra, 
F.  R.  1019,  1893;  Columbia  Wire  Stebler  v.  Riverside  Ass'n,  214 
Co.  v.  Freeman  Wire  Co.,  71  F.  R.  F.  R.  550,  1914. 

306,  1895;  Bowers  Dredging  Co.  117  Cooley  on  Torts,  p.  136. 

v.  New  York  Dredging  Co.,  77  11S  Jennings  v.  Dolan,  29  F.  R. 

F.  R.  983,  1896.  862,  1887. 

114  Ring  Refrigerator  Co.  v.  St.  119  Elizabeth  v.  Pavement  Co., 
Louis  Ice  Mfg.  Co.,  67  F.  R.  535,  97  U.  S.  140,  1877;  Featherstone 
1895.  v.  Cycle  Co.,  53  F.  R.  110,  1892. 


CHAP.    XVII.]  COURTS,    PARTIES,    CAUSES  493 

person  furnishes  one  part  of  a  patented  combination,  in- 
tending that  it  shall  be  assembled  with  the  other  parts 
thereof,  and  that  the  complete  combination  shall  be  used 
or  sold;  that  person  is  liable  to  an  action,  as  infringer  of 
the  patent  on  the  complete  combination.120  The  part 
furnished  must,  however,  be  an  element  of  the  combina- 
tion.121 It  has  been  held  that  where  the  part  is  sent  to  a 
foreign  country  there  to  be  incorporated  in  the  remainder 
of  the  combination  which  had  been  made  in  the  United 
States,  the  sender  is  not  guilty  of  contributory  infringe- 
ment.122 Where  a  person  furnishes  a  machine  which 
is  useful  only  for  the  purpose  of  making  a  patented  ar- 
ticle, intending  that  it  shall  be  thus  used,  that  person  is 
himself  liable  for  any  infringement  which  is  afterward 
committed,  in  the  manufacture  of  that  article  with  that 
machine.123  So  also,  a  person  is  chargeable  with  contrib- 
utory infringement  of  a  patent  on  a  machine,  where  he 

120  Wallace  v.  Holmes,  9  Blatch.  Standard  Computing  Scale  Co.  v. 

73,  1871;  Schneider  v.  Pountney,  Computing  Scale  Co.,  126  F.  R. 

21   F.   R.  403,   1884;  Travers  v.  639,  1903;  Heekin  Co.  v.  Baker, 

Beyer,  26  F.R.  450,  1886;  Stearns  138   F.    R.   63,    1905;    Rumford 

v.  Phillips,  43  F.  R.  795,  1890;  Chemical     Works     v.     Hygiene 

Thomson-Houston  Electric  Co.  v.  Chemical  Co.,  159  F.  R.  436, 1908; 

Kelsey  Electric  Railway  Specialty  General  Electric  Co.  v.  Sutter,  186 

Co.,  72  F.  R.  1016,  1896;  and  75  F.  R.  637,  1911;  New  York  Scaf- 

F.     R.     1005,     1896;    American  folding  Co.  v.  Whitney,  224  F.  R. 

Graphophone    Co.    v.    Amet,    74  452,    1915;  Safety  Car  Heating, 

F.     R.     791,     1896;     Thomson-  etc.,  Co.  v.  Gould  Coupler  Co.,  229 

Houston  Co.  v.  Ohio  Brass  Co.,  F.  R.  429,  1916. 
80  F.  R.  721,  1897;  Red  Jacket          121  National  Malleable  Castings 

Mfg.  Co.  v.  Davis,  82  F.  R.  432,  Co.  v.  T.  H.  Symington  Co.,  230 

1897;  American  Graphophone  Co.  F.  R.  821,  1916. 
v.   Leeds,   87   F.   R.   874,    1898;  122  BuUock  Electric,  etc.,  Co.  v. 

Wilkins     Shoe-Button     Fastener  Westinghouse,  etc.,  Co.,  129  F.  R. 

Co.  v.  Webb,  89  F.  R.  996,  1898;  105,  1904. 

Canda    v.     Michigan    Malleable  123  American  Graphophone  Co. 

Iron  Co.,   124  F.   R.  486,   1903;  v.  Hawthorne,  92  F.  R.  516,  1899. 


I'.ll  COURTS,    PARTIES,    CAUSES         [CHAP.    XVII. 

furnishes  articles  for  that  machine  to  operate  upon,  in- 
tending that  the  machine  shall  be  used  by  operating  on 
those  articles.124  Furthermore,  where  a  person  furnishes 
a  machine,  composition  of  matter  or  other  article,  which 
is  particularly  adapted  to  be  used  in  performing  a  patented 
process,  and  which  the  person  furnishing  the  same,  in- 
tends shall  be  thus  used,  that  person  is  liable  as  a  con- 
tributory infringer,  for  any  infringement  which  after- 
ward occurs  in  accordance  with  his  intention.12''  But 
where  the  machine  or  other  property  thus  furnished,  is 
useful  for  some  other  purpose  than  to  be  a  part  of  a  pat- 
ented combination,  or  to  make  a  patented  article,  or  to  be 
operated  upon  by  a  patented  machine,  or  to  be  used  in 
performing  a  patented  process,  and  where  he  who  fur- 
mshes  the  property,  does  not  intend  or  know,  when  fur- 
nishing the  same,  that  it  is  to  be  thus  used,  he  incurs  no 
liability  to  an  action  for  infringement.126  But  if  he  knew 
or  intended  that  the  property  furnished  by  him  was  to 
be  used  in  either  of  the  infringing  ways,  he  cannot  defeat 
an  action  for  infringement,  by  showing  that  the  furnished 
property  could  have  been  used  in  some  non-infringing 

124  Heatoii-Peninsular  Button-  Loew  Filter  Co.,  103  F.  R.  303, 
Fastener  Co.  v.  Eureka  Specialty  1900;  John  R.  Williams  Co.  v. 
Co.,  77  F.  R.  288,  1896;  Tubular  Miller,  DuBrul  &  Peters  Co.,  107 
Rivet  &  Stud  Co.  v.  O'Brien,  93  F.  R.  290,  1901;  Loew  Filter  Co. 
F.  R.  200,  1898.  v.  German-American  Filter  Co., 

125  Rumford  Chemical  Works  v.  107  F.  R,  949,  1901. 

Hecker,  2  Bann.  &  Ard.  363,  1876;  12S  Maynard  v.  Pawling,  5  Bann. 

Willis  v.  McCullen,  29  F.  R.  641,  &  Ard.  551,  1880:  Millner  v.  Scho- 

1886;  Alabastine  Co.  v.  Payne,  27  field,  4  Hughes,  261,  1881;  Snyder 

F.  R.  560,  1886;  Celluloid  Mfg.  v.  Bunnell,  29  F.  R.  47,  1886;  Geis 

Co.  v.  Zylonite  Co.,  30  F.  R.  437,  v.  Kimber,  36  F.  R.  109,  1888; 

1887;  Boyd  v.  Cherry,  50  F.  R.  Edison    Electric    Light    Co.    v. 

282,  1883;  New  York  Filter  Co.  Peninsular  Light,  Power  &  Heat 

v.  Jackson,  91  F.  R.  425,  1898;  Co.,  95  F.  R.  673,  1899. 
German-American   Filter   Co.    p. 


CHAP.    XVII. J  COURTS,    PARTIES,    CAUSES  495 

way.127  In  the  absence  of  specific  proof  of  knowledge 
or  intent,  the  fact  that  the  property  furnished  could  be 
used  with  an  article  or  machine  which  in  itself  could  not 
be  an  infringement  and  that  there  are  many  such  articles 
or  machines  in  use  is  sufficient  to  absolve  one  who  sup- 
plies such  property  from  the  charge  of  infringement.128 
Also  if  the  invention  consists  merely  of  a  new  arrange- 
ment of  old  parts,  one  who  sells  the  old  parts  is  not  charge- 
able with  infringement  unless  they  were  sold  with  the 
knowledge  that  they  were  intended  to  be  used  in  making 
up  the  combination.129 

The  rules  regulating  the  rights  of  substitution  or  "  re- 
supply  "  of  an  element  of  a  patented  combination  when  the 
element  is  of  such  a  nature  that  it  must  be  renewed  or 
replaced  from  time  to  time  and  is  something  upon  which 
the  remaining  elements  operate,  has  received  thorough 
consideration  by  the  Supreme  Court  in  the  case  of  Leeds 
&  Catlin  v.  Victor  Talking  Machine  Co.129a  In  the  opin- 
ion, Mr.  Justice  McKenna  said  that  the  rule  of  Wilson  v. 
Simpson,129''  permitted  "the  re-supply  of  the  effective 
ultimate  tool  of  the  invention  which  is  liable  to  be  often 
worn  out  or  to  become  inoperative  for  its  intended  effect, 
which  the  inventor  contemplated  would  have  to  be  fre- 
quently replaced  anew,  during  the  time  that  the  machine 
as  a  whole  might  last."  The  parts  which  the  defendant 
claimed  to  be  entitled  to  supply  in  the  Leeds  &  Catlin 
case  were  ordinary  unpatented  disc  phonograph  records, 

127  Saxev.  Hammond,  1  Holmes,  129. Johnson  v.  Foos  Mfg.  Co., 
456,    1875;   Bowker  v.   Dows,   3      141  F.  R.  73,  1905. 

Bann.  &  Ard.  518,  1878;  Imperial  129a  Leeds   &   Catlin   v.   Victor 

Chemical  Mfg.  Co.  v.  Stein,  69  Talking  Machine  Co.,  213  U.  S. 

F.  R.  617,  1895.  325,  1909. 

128  Sheridan-Clayton  Paper  Co.  129b  Wilson  v.  Simpson,  9  How. 
v.   United  States  Envelope  Co.,  109,  1849. 

232  F.  R.  153,  1916. 


196  COURTS,    PARTIES,    CAUSES  [CHAP.    XVII. 

which,  however,  constitute  an  clement  of  the  patented 
machine  as  a  whole.  In  respect  to  these  the  court  said: 
"But  there  is  no  pretense  in  the  case  at  bar  of  mending 
broken  or  worn-out  records  or  of  repairing  or  replacing 
the  'operative  ultimate  tool  of  the  invention'  which  has 
deteriorated  by  use.  The  sales  of  petitioner  as  found  by 
the  courts  below  and  as  established  by  the  evidence,  were 
not  to  furnish  new  records  identical  with  those  originally 
offered  by  the  Victor  Co.,  but,  to  use  the  language  of 
Judge  Lacombe  in  the  Circuit  Court,  'more  frequently 
to  increase  the  repertoire  of  tunes  than  as  substituted 
for  certain  worn-out  records.' 

' '  The  right  of  substitution  or  '  re-supply '  of  an  element 
depends  upon  the  same  test.  The  license  granted  to  a 
purchaser  of  a  patented  invention  is  to  preserve  its  fit- 
ness for  use  so  far  as  it  may  be  affected  by  wear  or  break- 
age. Beyond  this  there  is  no  license."  The  true  test 
seems  to  be  whether  or  not  the  element  supplied  is  con- 
sumed in  the  ordinary  use  of  the  machine. 129c 

Persons  who  contribute  money  for  the  purpose  of  sup- 
porting others  in  infringing  a  patent,  are  also  liable  as  in- 
fringers.130 Where  an  infringer  makes  a  voluntary  assign- 
ment for  the  benefit  of  creditors,  and  the  assignee  continues 
the  infringement,  both  may  be  sued  jointly  for  the  in- 
fringement committed  before,  and  also  that  committed 
after  the  assignment. 131  And  a  corporation  and  its  receiver 
may  be  joined  as  defendants,  for  infringements  begun  by 
the  company  and  continued  by  the  receiver.132 

Where  the  owner  of  a  patent  on  something  which  in- 

129c  Williams    v.    Barnes,    234  m  Gordon  v.  Harvester  Works, 

F.  R,  339,  1916.  23  F.  R.  147,  1885. 

130  Bate    Refrigerating    Co.    v.  m  Union  Switch  &  Signal  Co. 

Gillett,  30  F.  R.  684,  1887.  v.  Philadelphia  &  Reading  Rail- 

road Co.,  69  F.  R.  834,  1895. 


CHAP.    XVII. J  COURTS,    PARTIES,    CAUSES  497 

fringes  an  older  patent,  licenses  another  to  use  his  device, 
and  furnishes  to  his  licensee,  plans  and  drawings  for  mak- 
ing his  device,  and  requiring,  to  that  end,  the  making  of 
the  device  of  the  prior  patent,  without  procuring  or  in- 
tending to  procure  the  consent  of  its  owner,  that  licensor 
is  a  joint  infringer  with  his  licensee  of  the  prior  patent.133 
Where  one  man  owns  and  others  operate  an  infringing 
machine,  all  are  jointly  liable  to  an  action  therefor.134 
And  where  one  who  has  contracted  to  erect  a  building, 
lets  a  portion  of  the  work  to  a  subcontractor,  and  in  the 
prosecution  of  their  respective  parts,  each  of  them  in- 
fringes a  patent  of  another,  both  of  them  are  liable  as 
j  oint  infringers . 135 

Where  one  of  several  joint  infringers  is  sued  for  their 
infringement,  the  other  one  or  ones  may  be  admitted  as 
joint  defendant  or  defendants  to  help  defend  the  suit.136 
The  bill,  however,  in  such  cases  should  declare  only  on  the 
joint  infringement  and  not  on  individual  infringements 
of  the  respective  defendants,  for  in  the  latter  case  it  will 
be  demurrable  for  multifariousness.137 

And  while  the  maker,  the  seller  and  the  user  of  a  pat- 
ented machine,  manufacture,  or  other  article,  are  not 
joint  infringers  of  the  patent  thereon,138  the  maker  will  be 
bound  by  an  injunction  obtained  in  the  suit  against  the 
dealer  which  the  former  has  openly  and  avowedly  sup- 
ported even  though  he  was  not  a  party  to  the  record.139 

133  Toppan  v.  Tiffany  Car  Co.,  521,  1893;  Ring  Refrigerator  Co. 
39  F.  R.  420,  1889.  v.  St.  Louis  Ice  Mfg.  Co.,  67  F.  R. 

134  Woodworth   v.   Edwards,   3      540,  1895. 

Woodbury  &  Minot,  121,  1847.  137  Jewell  v.   City  of  Philadel- 

135  Jackson  v.  Nagle,  47  F.  R.      phia,  186  F.  R.  639,  1911. 

703,  1891.  138  Consolidated    Car    Heating 

136  Curran  v.  Car  Co.,  32  F.  R.  Co.  v.  American  Electric  Heating 
835,   1887;  Standard  Oil  Co.  v.  Corp.,  82  F.  R.  998,  1897. 
Southern   Pacific  Co.,   54  F.   R.  «•  Eagle  Mfg.  Co.  v.  Miller,  41 


198  COURTS,    PARTIES,    CAUSES         [CHAP.    XVII. 

The  maker  may,  however,  he  admitted  by  the  court  to 
defend  as  a  party  to  the  record  a  suit  against  the  seller, 
or  a  suit  against  the  user,  and  the  seller  may  be  admitted 
in  the  same  way  to  defend  the  user,  when  the  user  is  sued 
for  using  the  article  sold  to  him.110  And  it  follows  that  If 
pending  the  suit  the  plaintiff  does  anything  that  would 
terminate  it,  as,  for  instance,  purchases  all  the  business 
and  good-will  of  the  defendant's  business,  the  manufact- 
urer who  has  already  intervened  may  dismiss  the  suit  or 
else  assume  the  defence,  in  which  latter  event  the  suit 
would  be  tried  on  its  merits  notwithstanding  the  absence 
of  the  original  defendant.141 

Although  the  maker  has  openly  and  avowedly  taken 
care  of  the  defence  of  the  suit  he  may  not  on  applica- 
tion of  the  plaintiff  be  made  a  party  to  the  record,  whether 
or  not  he  could  originally  have  been  sued  in  the  district 
of  suit.142  But  where  pending  suit  a  defendant  corpora- 
tion transfers  all  its  assets  and  good-will  to  another 
corporation  the  transferee  may  be  brought  into  the  suit 
by  supplemental  bill  and  subjected  to  the  injunction 
order  and  accounting,143  at  least  if  the  latter  had  openly 
and  avowedly  defended  the  original  suit.144  Such  a  trans- 
it R.  351,  1890;  Dicks  Press  dated,  etc.,  Ry.,  72  F.  R.  10,  1896; 
Guard  Mfg.  Co.  v.  Bowen,  229  Parsons  Non-Skid  Co.  v.  E.  J. 
F.  R.  193,  1916.  Willis,  176  F.  R.  176,  1909;  but 

See  Section  696.  see  Dicks  Press  Guard  Mfg.  Co. 

i«  Consolidated    Rubber    Tire      v.  Bowen,  229  F.  R.  193,  1916, 
Co.   v.  Finley  Rubber  Tire  Co.,      and   Western   Tel.    Mfg.    Co.   v. 
119  F.  R.  705, 1902;  United  States      American  Electric  Telephone  Co., 
Expansion    Bolt    Co.    v.    H.    G.      137  F.  R.  603, 1905. 
Kroucke  Hardware  Co.,  216  F.  R.  143  Young  v.  Herman,  232  F.  R. 

186,  1914.  361,  1916;  Western  Tel.  Mfg.  Co. 

141  Irving-Pitt     Mfg.     Co.     v.      v.  Am.  Electric  Co.,  141  F.  R.  998, 
Twinlock   Co.,   220   F.    R.    325,      1905. 
1914.  See  Section  625. 

!4'-Bidwell  v.   Toledo   Consoli-  I44  Western     Telephone     Mfg. 


CHAP.    XVII.]  COURTS,    PARTIES,    CAUSES  199 

feree  is  not,  however,  bound  by  the  findings  of  law  or 
fact  on  which  a  decree  fixing  profits  against  the  transferor 
was  based,  as  the  respective  liabilities  are  separable  and 
relate  only  to  the  respective  periods  of  ownership.145 

§  408.  A  partnership  is  liable  to  an  action  for  an  in- 
fringement committed  in  the  regular  course  of  the  partner- 
ship business,  by  one  or  more  of  the  partners,  or  under  his 
or  their  orders;  and  also  for  any  infringement  committed 
outside  of  that  regular  course  of  business,  if  it  was  pre- 
viously authorized  or  afterward  adopted  as  the  act  of  the 
partnership  by  all  the  partners.  But  no  partnership  is 
liable  for  any  infringement  committed  outside  of  the  regu- 
lar course  of  the  partnership  business,  unless  it  was  so 
authorized  or  adopted.146  A  person  who  is  employed  as 
manager  of  a  partnership,  and  in  that  capacity  infringes 
a  patent,  is  a  joint  infringer  with  the  partners.147 

Likewise  is  the  case  with  a  joint-stock  association. 
Each  member  may  be  held  as  an  infringer  for  acts  of  in- 
fringement committed  by  the  association.148 

§  409.  Private  corporations  are  responsible  for  infringe- 
ment, committed,  authorized,  or  ratified  by  them,  under 
substantially  the  same  rules  as  those  which  govern  the 
similar  responsibility  of  natural  persons.  It  was  formerly 
supposed  that  corporations  could  not  be  held  liable  for 
torts,  because  torts  are  never  authorized  by  corporate 
charters,  and  are  therefore  ultra  vires.  But  this  idea  was 
soon  found  to  produce  gross  injustice  in  its  practical 
operation;  and  was  therefore  abandoned  by  the  courts.149 

Co.  v.  American  Electric  Tele-  53  F.  R.  110,  1892;  Trent  v.  Ris- 
phone  Co.,  137  F.  R.  603,  1905.         don  Iron  &  Locomotive  Works, 

145  Young  v.  Herman,  232  F.  R.      102  F.  R.  635,  1900. 

361,  1916.  148  National     Casket     Co.     v. 

146  See   Story    on   Partnership,  Stolts,  135  F.  R.  534,  1905. 
Sections  166  and  168.  149  Baltimore  &  Potomac  Rail- 

147  Featherstone   v.   Cycle   Co.,  road  Co.  v.  Fifth  Baptist  Church, 


.")()()  COURTS,    PARTIES,    CAUSES         [CHAP.    XVII. 

The  law  is,  that  every  private  corporation  is  liable  for  all 
the  torts  which  were  authorized  by  that  corporation,  and 
lor  all  (oris  done  in  pursuance  of  any  authority  to  act  on 
its  behalf,  on  the  subject  to  which  the  torts  relate,  and  for 
all  torts  ratified  by  the  corporation  after  they  are  com- 
mitted.160 And  in  deciding  upon  this  liability,  the  courts 
consider  corporate  officers,  agents,  and  servants  as  pos- 
sessing a  large  discretion,  and  they  accordingly  hold  the 
corporation  liable  for  all  their  acts  within  the  most  ex- 
tensive range  of  the  corporate  powers.151  The  agent  of  a 
corporation  in  committing  an  infringement  may  be  an- 
other corporation;  and  the  relation  of  agency  exists  and 
binds  the  principal,  where  the  agent  infringes  a  patent  in 
authorized  pursuance  of  the  business  which  the  principal 
was  chartered  to  transact.152  And  a  corporation  organ- 
ized for  the  purpose  of  conducting  a  particular  business, 
alleged  to  infringe  a  particular  patent,  may  be  sued  on  that 
patent,  without  waiting  for  the  infringement  to  begin.15'5 
Unless  their  charters  otherwise  provide,  public  corpora- 
tions which  are  liable  at  all  for  infringements  of  patents, 
are  doubtless  liable  under  the  same  circumstances  and  to 
the  same  extent  as  private  corporations  are.154 

§  410.  Under  what  circumstances  and  to  what  extent 
an  officer,  director,  or  stockholder  of  a  corporation  is 
personally  liable  for  infringements  committed  by  it,  is  a 
compound  question,  the  analysis  of  which  is  complicated. 
There  are  three  kinds  of  liability  for  infringements  of 
patents.     These  are,  liability  to  an  injunction;  liability 

108  U.  S.  330,  1882;  Salt  Lake  road  Co.  v.  Winans,  17  Howard, 

City  v.  HoUister,  118  U.  S.  256,  38,  1854. 

1886.  153  National  Mechanical  Direc- 

150  May  v.  County  of  Mercer,  tory  Co.  v.  Polk,  121  F.  R.  746, 
30  F.  R.  248,  1887.  1903. 

151  See  Cooley  on  Torts,  p.  119.  154  May  v.  County  of  Mercer,  30 
162  York  &  Maryland  Line  Rail-      F.  R.  248,  1887. 


CHAP.    XVII.]  COURTS,    PARTIES,    CAUSES  503 

to  a  recovery  of  infringer's  profits;  and  liability  to  a  re- 
covery of  patentee's  damages. 

The  liability  to  an  injunction  can  be  enforced  against 
every  person  connected  with  a  corporation,  without  mak- 
ing any  person  a  defendant  to  the  action  in  equity  which 
seeks  to  enforce  that  liability;  because  a  decree  for  an  in- 
junction against  a  corporation,  can  properly  be  made  to 
equally  restrain  all  the  officers,  directors  and  stockholders 
of  that  corporation  from  doing  whatever  the  decree  for- 
bids the  corporation  to  do.165  And  the  injunction  will 
extend  to  them  even  though  they  enter  the  employ  of 
another  who  was  not  a  party  to  the  suit.156  Therefore,  a 
patentee  can  have  no  motive  to  sue  such  officer,  director 
or  stockholder,  for  an  injunction;  except  to  impose  on  him 
the  burden  of  the  expenses  and  costs  of  patent  litigation. 
That  motive  is  not  one  which  is  apt  to  move  a  court  of 
equity  into  action,  and  therefore  many  such  courts  have 
dismissed  such  representatives  of  corporations  from  suits, 
which  sought  to  make  them  defendants  to  prayers  for 
injunctions.1" 

155  Howard  v.  St.  Paul  Plow-  thaler  Linotype  Co.  v.  Ridder,  65 
Works,  35  F.  R.  747,  1888;  Bos-  F.  R.  854,  1895;  Consolidated 
ton  Woven  Hose  Co.  v.  Star  Rub-  Brake-Shoe  Co.  v.  Chicago,  P.  & 
ber  Co.,  40  F.  R.  167,  1889;  St.  L.  Ry.  Co.,  69  F.  R.  412,  1895; 
Mergenthaler  Linotype  Co.  v.  Bowers  v.  Atlantic  Gulf  &  Pacific 
Ridder,  65  F.  R.  853,  1895;  Co.,  104  F.  R.  888,  1900;  Loomis- 
Donaldson  v.  Roksament  Stone  Manning  Filter  Co.  v.  Manhattan 
Co.,  176  F.  R.  386,  1910.  Filter  Co.,  117  F.  R.  325,  1902; 

156  Campbell  v.  Magnet  Light  Farmers'  Mfg.  Co.  v.  Spruks  Mfg. 
Co.,  175  F.  R.  117,  1909;  but  see  Co.,  119  F.  R.  594,  1902;  Greene 
E.  W.  Bliss  Co.  v.  Atlantic  Handle  v.  Buckley,  120  F.  R.  955,  1902; 
Co.,  212  F.  R.  190,  1913.  Hutter  v.   DeQ.   Bottle  Stopper 

"»  Howard  v.  St.  Paul  Plow-  Co.,  128  F.  R.  283,  1904  (collates 
Works,  35  F.  R.  744, 1888;  Boston  authorities);  Glucose  Sugar  Re- 
Woven  Hose  Co.  v.  Starr  Rubber  fining  Co.  v.  St.  Louis  Syrup  Co., 
Co.,  40  F.  R.  167,  1889;  Mergen-  135  F.   R.   540,    1905;  Cazier  v. 


502  COURTS,    PARTIES,    CATJSE8         [CHAP.    XVII. 

'This  doctrine,  however,  does  not  go  t<>  the  extenl  of 

protecting  an  individual  who  is  using  the  corporation 
merely  as  a  shield  to  protect  him  in  his  infringement, 
and  in  .such  cases  he  may  be  sued  without  joining  the 
corporation.168  On  the  same  principle  an  officer  of  a  cor- 
poration may  not  resign  his  office  pending  a  suit  against 
the  corporation  for  infringement  and  then  continue  the 
manufacture  of  the  article  in  controversy,  as  he  is  bound 
by  the  decree  and  is  punishable  for  violation  of  the  in- 
junction.1*0 Likewise  in  the  case  of  one  who  with  knowl- 
edge that  others  have  been  enjoined,  takes  over  their 
business  and  continues  it  to  their  profit,  whether  he  was 
actually  employed  by  them  or  not.160 

It  has  even  been  held  that  a  corporation  which  owns  the 
majority  of  the  stock  of  a  subsidiary  corporation  and  util- 
izes the  latter  as  one  of  its  manufacturing  departments 
is  directly  liable  to  an  owner  of  a  patent  where  the 
patent  has  been  infringed  by  the  subsidiary  corpora- 
tion in  the  course  of  the  business  of  the  main  corpora- 
tion.161 

No  person  is  liable  to  a  recovery  of  infringer's  profits, 
except  such  profits  as  were  made  by  himself;  though  the 
profits  made  by  a  joint  infringer  with  him,  may  have  been 

Mackie-Lovejoy    Mfg.    Co.,    138  158  Calculagraph  Co.  v.  Wilson, 

F.  R.  654,  1905.  132  F.  R.  20,  1904;  Crown  Cork 

Contra,  in  cases  in  which  the  &  Seal   Co.  v.  Brooklyn   Bottle 

officer    is    personally    active    in  Stopper  Co.,  190  F.  R.  323,  1911. 

carrying    on    the    infringement:  159Janney    v.    Pancoast,    etc., 

Simplex  Electric  Heating  Co.  v.  Co.,  124  F.  R.  972,  1903. 

Leonard,    147  F.   R.   744,    1906;  16°  Diamond  Drill  &  Mach.  Co. 

Whiting    Safety  .  Catch    Co.    v.  v.  Kelley  Bros.,  132  F.  R.  978, 

Western    Wheeled    Scraper    Co.,  1904. 

148    F.    R.    396,    1905;    Weston  See  Sections  108,  109. 

Electrical    Inst.    Co.    v.    Empire  161  Westinghouse     Electric     & 

Electrical    Inst.    Co.    (discussing  Mfg.  Co.  v.  Allis-Chalmers  Co., 

authorities),  166  F.  R.  867,  1909.  176  F.  R.  362,  1910. 


CHAP.    XVII.]  COURTS,    PARTIES,    CAUSES  .">().'! 

much  larger  than  any  made  by  him.162  Where  a  person 
has  no  connection  with  a  corporation,  except  as  an  officer, 
director  or  stockholder,  he  makes  no  profit  from  any 
infringement  committed  by  that  corporation;  except  such 
as  he  may  receive  in  dividends  or  in  salary.  As  long  as  a 
corporation  is  solvent  enough  to  pay  over  to  a  patentee, 
all  the  profits  which  it  made  from  its  infringement  of  the 
patent  of  that  patentee,  there  is  no  good  reason  for  a 
court  of  equity  to  go  further  in  search  of  money  for  that 
purpose.  There  is,  therefore,  no  good  reason  for  such  a 
court  taking  jurisdiction  of  any  officer,  director,  or  stock- 
holder of  the  corporation,  with  a  view  of  tracing  into  his 
hands,  the  money  needed  to  satisfy  the  patentee's  claim 
for  infringer's  profits.  It  follows  that  an  officer,  director, 
or  stockholder  in  a  corporation  is  not  liable  to  a  recovery 
of  infringer's  profits,  on  account  of  any  infringement 
committed  by  the  corporation;  except  where  the  corpora- 
tion is  so  insolvent  as  to  be  unable  to  itself  respond  to  an 
execution  for  the  amount  of  those  profits. 162a  And  even 
in  that  exceptional  case,  no  person  is  liable  to  a  recovery 
of  infringer's  profits,  out  of  money  received  by  him,  as  a 
fair  compensation  for  services  rendered  to  the  corporation. 
But  in  the  exceptional  case,  dividends  can  be  reached  in 
the  hands  of  stockholders,  and  subjected  to  the  payment 
of  the  infringer's  profits;  because  a  court  of  equity  will 
pursue  the  money  of  a  corporation  into  whosesoever  pos- 
session it  may  be  transferred,  when  that  pursuit  is  neces- 

162  Elizabeth  v.  Pavement  Co.,  Bowers  v.  Atlantic,  Gulf  &  Pacific 

97  U.  S.  140,  1877.  Co.,  104  F.  R.  888,  1900;  Loomis- 

162a  Boston  Woven  Hose  Co.  v.  Manning  Filter  Co.  v.  Manhattan 

Star  Rubber  Co.,  40  F.  R.  167,  Filter  Co.,  117  F.  R.  325,  1902; 

1889;  Mergenthaler  Linotype  Co.  Greene  v.  Buckley,  120  F.  R.  955, 

v.  Ridder,  65  F.  R.  854,   1895;  1902;Panzl».  Battle  Island  Paper, 

Western   Electric   Co.    v.    Home  etc.,  Co.,  132  F.  R.  607,  1904. 
Telephone  Co.,  85  F.  R.  661,  1898; 


504  COURTS,    PARTIES,    CAUSES         [CHAP.    \\ll. 

sary  to  reach  means  for  paying  the  corporate  obliga- 
tions.163 

§  410a.  The  liability  to  ;i  recovery  of  patentee's  dam- 
ages, depends  upon  different  reasons  from  those  which 
negative  or  condition  the  liability  to  a  recovery  of  in- 
fringer's profits;  where  those  damages  or  those  profits  are 
sought  to  be  recovered  from  an  officer,  director,  or  stock- 
holder of  an  infringing  corporation.  Judge  John  Lowell, 
in  1882,  held  that  an  action  at  law  cannot  be  maintained 
against  the  officers,  directors,  or  shareholders  of  a  corpora- 
tion  which  infringes  a  patent,  even  where  such  persons 
personally  conducted  the  business  which  constituted  the 
infringement."51  But  that  decision  was  expressly  over- 
ruled, in  respect  of  the  liability  of  directors,  in  1899,  by 
Judge  Francis  C.  Lowell,  when  writing  the  opinion  of 
the  majority  of  the  Circuit  Court  of  Appeals  for  the  first 
circuit.'6"'  Still,  one  of  the  three  judges  who  heard  that 
case,  dissented  from  the  decision  of  the  majority;  and  the 
case  did  not  deal  with  the  liability  of  officers  or  stock- 
holders. The  compound  question  of  the  liability  of  officers, 
directors,  and  stockholders  in  such  cases  is  important. 
Upon  it  may  sometimes  depend  the  just  reward  of  a  meri- 
torious inventor,  and  the  just  retribution  of  a  willful 
infringer.  A  full  explanation  of  the  subject,  is  therefore 
presented,  in  the  next  five  sections  of  this  book. 

§411.  Wrongs  are  divisible,  in  one  aspect,  into  two 
classes:  wrongs  of  commission  and  wrongs  of  omission. 
Where  an  officer,  director,  or  stockholder  of  a  corporation 

163  Mumma  v.  Potomac  Co.,  8      Inst.    Co.    v.    Empire    Electrical 
Peters,  286,  1834;  Curran  v.  Ar-      Inst.  Co.,  166  F.  R.  867,  1909. 
kansas,    15   Howard,   311,    1853;  184  United  Nickel  Co.  v.  Worth- 

Railroad  Co.  v.  Howard,  7  Wal-      ington,  13  F.  R.  393,  1882. 
lace,  409,  1868;  Weston  Electrical  165  National  Cash  Register  Co. 

v.  Leland,  94  F.  R.  514,  1899. 


CHAP.    XVII.]  COURTS,    PARTIES,    CAUSES  505 

is  engaged  in  managing  its  business,  and  as  a  part  of  that 
business  manages  and  directs  the  infringement  of  a  pat- 
ent, that  person  is  chargeable  with  a  wrong  of  commission. 
Where  such  a  person  has  power  to  prevent  his  corporation 
from  infringing  a  patent,  and  omits  to  exercise  that  power, 
and  where  the  corporation  therefore  infringes  that  patent, 
then  that  person  is  chargeable  with  a  wrong  of  omission. 
Where  a  person  is  an  officer,  director,  or  stockholder  of  a 
corporation,  but  has  no  personal  power  to  cause  it  to  in- 
fringe a  particular  patent,  nor  to  restrain  it  from  so  doing, 
that  person  is  chargeable  with  no  wrong  of  either  sort. 

§  412.  Stockholders  seldom  have  any  power,  merely  as 
stockholders,  to  control  the  action  of  their  corporation  in 
such  a  matter  of  detail  as  the  infringement  of  a  particular 
patent.  Unless  it  can  be  shown  that  the  stockholder 
whom  it  is  sought  to  hold  liable  in  a  particular  case,  did 
possess  power  of  that  kind,  it  is  clear  that  the  common  law 
will  not  compel  him  to  respond  in  damages  for  any  in- 
fringement with  which  he  was  not  personally  connected. 
If  the  law  were  otherwise,  a  man  could  lawfully  be  made  to 
suffer  for  wrongs  which  he  did  not  commit,  and  could  not 
prevent,  and  from  which  he  received  no  advantage.  In- 
deed, it  is  the  general  rule  of  the  common  law  that  mere 
stockholders  in  a  Corporation  are  not  liable  for  its  debts, 166 
and  if  not  liable  for  its  debts,  they  surely  ought  not  to 
be  liable  for  its  torts. 

§  413.  The  officers  of  a  corporation  are  the  persons  who 
are  charged  with  the  superintendence  and  control  of  its 
transactions.  It  is  doubtless  their  duty  to  refrain  from 
directing  infringements  to  be  committed;  and  also  to  pre- 
vent the  agents  and  servants  of  their  corporations  from 
committing  infringements  of  patents  when  prosecuting  the 
corporate  business.  If  such  an  officer  directs  and  causes 
106  Shaw  v.  Boylan,  16  Indiana,  3S6,  1861. 


.")()('(  COUNTS,    PARTIES,    CAUSES         [('HAP.    XVII. 

a  specific  thing  to  be  done,  which  turns  out  to  constitute 
an  infringement,  it  is  doubtless  difficult  to  see  why  he 
should  be  permitted  to  shift  all  the  responsibility  for  the 
tort  upon  the  intangible  corporation,  that  is  to  say,  upon 
the  innocent  stockholders  us  a  body. 

If  an  agent  or  a  servant  of  a  corporation  conunits  an 
infringement  in  the  course  of  the  corporate  business,  the 
officers  whose  function  it  is  to  control  that  agent  or  that 
servant  are  chargeable  with  a  wrong  of  omission.  They 
are  guilty  of  non-feasance  in  the  performance  of  their 
official  duties.  If  their  omission  to  prevent  the  infringe- 
ment is  the  result  of  gross  inattention  on  their  part,  they 
are  liable  to  the  corporation  for  any  loss  it  may  incur  on 
account  of  the  infringement ;  but  it  is  otherwise  if  the  omis- 
sion resulted  from  an  error  of  judgment.167  Whether  such 
an  officer  is  liable  at  common  law  to  the  owners  of  the 
patent  infringed,  seems  to  depend  upon  other  considera- 
tions. 

If  an  officer,  in  pursuance  of  his  general  authority, 
directs  a  servant  of  a  corporation  to  make  a  machine  for 
a  particular  purpose,  which  machine  may  be  made  so  as 
to  infringe  a  patent,  or  may  be  made  so  as  not  to  have  that 
effect,  it  seems  that  the  officer  is  bound  to  see  that  it  is 
not  made  so  as  to  infringe,  and  that  if  the  servant  makes 
it  in  that  way,  the  officer  is  liable  to  the  patentee.168  But 
if  a  servant  of  a  corporation,  without  any  special  orders 
to  do  so,  makes  or  uses  or  sells  a  thing  which  turns  out  to 
be  an  infringement  of  a  patent,  it  seems  that  no  superior 
officer  is  personally  liable  therefor  at  common  law.169 
It  appears  reasonable  that  officers  of  corporations  should 

107  Spering's  Appeal,  71  Penn-  >69  See  Bath  v.  Caton,  37  Michi- 

sylvania  State,  11,  1872.  gan,  202,  1877. 

168  See  Hewett  v.  Swift,  3  Allen 
(Mass.),  425,  1862. 


CHAP.    XVII.]  COURTS,    PARTIES,    CAUSES  507 

be  bound  to  see  that  whatever  they  cause  to  be  done  is 
done  lawfully;  but  it  would  perhaps  not  be  ordinarily 
right  to  make  them  personally  responsible  to  strangers 
for  acts  spontaneously  committed  by  their  subordinates. 

§  414.  Directors  of  corporations,  unlike  other  officers, 
act  only  in  a  collective  capacity.  Where  an  entire  board 
of  directors  unanimously  order  a  particular  thing  to  be 
done  which  will  constitute  an  infringement  of  a  patent, 
and  where  that  thing  is  accordingly  done  by  the  corpora- 
tion's agents  or  servants,  there  seems  to  be  no  reason  why 
those  directors  should  not  be  held  personally  liable  to  an 
action  for  that  infringement.  If  the  corporation  is  alone 
liable  in  such  a  case,  then  crafty  and  dishonest  men  may 
often  manage  to  divide  the  spoils  of  infringement,  and 
leave  nothing  but  an  insolvent  or  dormant  corporation 
to  be  sued  by  the  patentee.  It  would  evidently  be  a  re- 
proach to  our  laws  if  such  a  scheme  could  be  made  to  work. 
Whoever  attempts  to  defend  the  legal  safety  of  such  a 
mode  of  reaping  the  harvest  of  another,  should  have  his 
attention  called  to  the  following  sentence,  written  by  Jus- 
tice Campbell,  and  approved  by  the  Supreme  Court, 
and  worthy  to  be  quoted  in  every  law-book,  and  remem- 
bered by  every  man:  "It  is  certainly  true  that  the  law 
will  strip  a  corporation  or  individual  of  every  disguise, 
and  enforce  a  responsibility  according  to  the  very  right, 
in  despite  of  their  artifices."  170 

Where  the  action  of  a  board  of  directors  in  ordering  an 
infringement,  results  from  the  votes  of  a  majority  only,  the 
relations  of  the  minority  voters  to  the  resulting  infringe- 
ment must  be  different  from  that  of  the  others.  The 
members  of  the  minority  ought  not,  in  such  a  case,  to  be 
held  liable  for  the  action  of  the  board,  or  for  its  results, 

170  York  &  Maryland  Line  Railroad  Co.  v.  Winans,  17  Howard, 
40,  1854. 


508  I  OT7RTS,    PARTIEBj    CAUSES  [CHAP.    XVII. 

unless  they  afterward  adopt  it  by  ratification.  Where 
an  infringement  is  ordered  by  a  quorum  of  a  board  of 
directors,  in  the  absence  of  the  residue,  the  residue  will 
be  free  from  common-law  liability  for  the  wrong,  unless 
they  afterward  ratify  it,  or  unless  they  are  chargeable 
with  such  gross  non-attendance  upon  the  meetings  of  the 
board  as  justly  causes  them  to  be  held  responsible  for 
whatever  is  done  by  their  colleagues  in  their  absence. 
The  mere  fact  of  being  a  director  in  a  corporation  is  not 
sufficient  to  render  a  person  liable  at  common  law  for  any 
tort  committed  by  that  corporation  or  its  managers  or 
agents.171 

§  415.  But  there  is  a  statutory  liability  in  such  cases  as 
those  which  we  are  considering.  Most  of  the  States  have 
statutes  which  provide  that,  under  various  circumstances 
therein  specified,  the  officers,  directors,  or  stockholders 
of  a  corporation  shall  be  personally  liable  for  its  debts 
or  liabilities.  Section  721  of  the  Revised  Statutes  of  the 
United  States  provides  that:  "The  laws  of  the  several 
States,  except  where  the  Constitution,  treaties,  or  stat- 
utes of  the  United  States  otherwise  require  or  provide, 
shall  be  regarded  as  rules  of  decision  in  trials  at  common 
law,  in  cases  where  they  apply."  Under  this  section  of 
the  Revised  Statutes,  these  laws  of  the  States  will  prob- 
ably have  the  same  effect  in  a  patent  suit  in  a  United 
States  court,  that  they  would  have  in  any  action  of 
trespass  on  the  case  in  a  State  court.172     Such  of  the 

171  Arthur  v.  Griswold,  55  New  Black,  535,  1862;  Leffingwell  v. 
York,  406,  1874.  Warren,    2    Black,    599,     1862; 

172  McCluny  v.  Silliman,  3  Pe-  Hanger  v.  Abbott,  6  Wallace,  537, 
ters,  270,  1830;  McNeil  v.  Hoi-  1867;  Campbell  v.  Haverhill,  155 
brook,  12  Peters,  84,  1838;  Vance  U.  S.  614,  1895;  Parker  v.  Hall,  2 
v.  Campbell,  1  Black,  427,  1861;  Fisher,  62,  1857;  Parker  v.  Hawk, 
Hausknecht  v.  Claypool,  1  Black,  2  Fisher,  58,  1857;  Rich  v.  Rick- 
431,    1861;    Wright   v.    Bales,    2  etts,  7  Blatch.  230,  1870;  Hayden 


CHAP.    XVII. j  COURTS,    PARTIES,    CAUSES  509 

State  statutes  referred  to  as  make  stockholders,  officers, 
or  directors  responsible  for  the  "liabilities"  of  their  cor- 
porations are  clearly  broad  enough  to  cover  liabilities 
arising  out  of  infringement  of  patents.  Indeed  Justice 
Story  decided  that  such  liabilities  were  covered  by  the 
word  "  debts"  in  such  a  statute.173  In  most  of  the  States 
the  statutory,  individual  liability  of  officers,  directors, 
and  stockholders  of  corporations  is  more  limited  than  it 
was  in  Massachusetts  when  Justice  Story  made  that  de- 
cision. It  is  outside  the  scope  of  this  text-book  to  set 
forth  the  details  of  the  State  statutes  which  bear  upon  the 
point.  It  will  frequently  happen  that  the  controlling- 
legislative  edicts,  which  relate  to  the  matter,  will  be  found 
in  the  special  charters  of  particular  corporations,  rather 
than  in  the  general  statutes  of  the  several  States.  The 
general  principle  which  runs  through  all  such  laws  seems 
to  be  that  where  a  corporation  is  so  managed  that  it  can- 
not be  made  to  respond  to  lawful  claims  based  on  its  con- 
tracts or  torts,  those  officers  or  directors  who  caused  that 
inability,  or  those  officers,  directors,  or  stockholders 
who  profited  thereby,  shall  be  made  to  respond  in  its 
place. 

§  416.  A  consolidated  corporation  is  liable  to  actions 
in  equity  for  infringements  committed  before  the  con- 
solidation, by  each  of  its  constituents,  if  the  property 
and  franchises  which  the  consolidated  corporation  ac- 
quired from  that  constituent  were  of  sufficient  value,  over 
and  above  all  paramount  claims,  to  equal  the  profits 
or  damages  sought  to  be  recovered  in  such  actions.174 
This  proposition  results  from  the  fact  that  equity  regards 

v.  Oriental  Mills,  15  F.  R.  605,  174  Sayles  v.  The  Lake  Shore  & 

1883.  Michigan  Southern  Railway  Co., 

173  Carver  v.  Mfg.  Co.,  2  Story,  Manuscript,  1878. 
448,  1843. 


510 


COUNTS,    I'ARTIKS,    CAUSES  [CHAP.    XVII. 


the  property  of  a  corporation  as  held  in  trust  for  t lie  pay- 
incut  of  its  debts,  and  recognizes  the  right  of  creditors 
to  pursue  that  property  into  whosesoever  possession  it 
may  be  transferred,  unless  it  has  passed  into  the  hands 
of  a  bona  fide  purchaser.17" 

The  liability  of  consolidated  corporations  to  actions  at 
law,  for  infringements  committed  by  their  constituent 
corporations,  before  the  consolidation,  is  a  matter  which 
does  not  rest  on  common-law  principles,  so  much  as  upon 
the  statutes  of  the  States  wherein  those  consolidated 
corporations  came  into  being,  or  upon  the  private  Acts 
which  authorized  the  consolidations,  or  upon  the  charters 
of  the  constituent  or  of  the  consolidated  companies.  When- 
ever occasion  arises  to  hold  a  consolidated  corporation 
liable  to  an  action  at  law  for  such  a  cause,  a  proper  au- 
thority for  so  doing  can  probably  always  be  found  in  one  or 
another  of  these  sources. 

§  417.  A  plurality  of  patents  may  be  sued  upon  in  one 
action,  where  the  inventions  covered  by  those  patents 
are  embodied  in  one  infringing  process,  machine,  manu- 
facture, or  composition  of  matter; 176  but  not  otherwise.177 


175  Mumma  v.  Potomac  Co.,  8 
Peters,  286,  1834;  Curran  v.  Ar- 
kansas, 15  Howard,  311,  1853; 
Railroad  Co.  v.  Howard,  7  Wal- 
lace, 409,  1868. 

176  Seymour  v.  Osborne,  11  Wal- 
lace, 516,  1870;  Bates  v.  Coe,  98 


U.  S.  48,  1878;  Nourse  v.  Allen,  3 
Fisher,  63, 1859;  Gillespie  v.  Cum- 
mings,  3  Sawyer,  259,  1874;  Hor- 
man  Patent  Mfg.  Co.  v.  Railroad 
Co.,  15  Blatch.  444,  1879;  Game- 
well  Fire-Alarm  Telegraph  Co.  v. 
Chillicothe,   7  F.   R.  351,   1881; 


177  Nellis  v.  McLanahan,  6 
Fisher,  286,  1873;  Hayes  v.  Day- 
ton, 8  F.  R.  702,  1880;  Barney  v. 
Peck,  16  F.  R.  413,  1883;  Hayes 
v.  Bickelhoupt,  23  F.  R.  184, 
1885;  Huber  v.  Sanitary 
Depot,    34     F.     R.    752,    1888; 


Union  Switch  &  Signal  Co.  v. 
Philadelphia  &  Reading  Railroad 
Co.,  68  F.  R.  913,  1895;  Louden 
Mach.  Co.  v.  Montgomery  Ward 
&  Co.,  96  F.  R.  232,  1899;' Russell 
v.  Winchester  Arms  Co.,  97  F.  R. 
634,  1899. 


CHAP.    XVII.]  COURTS,    PARTIES,    CAUSES  511 

The  devices  of  the  various  patents  sued  upon  may  even 
be  distinct,  but  if  by  using  them  all  in  a  single  structure 
they  contribute  to  a  common  purpose  they  may  be 
joined  in  one  bill.178 

This  principle  goes  to  the  extent  of  permitting  a  patent 
for  a  machine  to  be  joined  with  a  patent  for  the  product 
of  the  machine,  when  the  alleged  infringement  consists 
of  the  product.179 

An  apparent  exception  to  the  general  rule  prohibiting 
the  joining  in  one  suit  of  causes  of  action  on  a  plurality 
of  unrelated  patents  exists  when  the  defendant  has  taken 
a  license  under  a  number  of  patents  and  has  expressly 
agreed  not  to  infringe  any  of  them,  in  which  event,  instead 
of  bringing  a  number  of  separate  actions  at  law,  a  single 
suit  may  be  brought  in  equity  to  enforce  the  provisions 
of  the  agreement  as  to  all  the  patents.180 

But  any  action  based  on  alleged  infringement,  in  one 
process  or  thing,  of  a  plurality  of  patents,  may  be  sustained 
by  evidence  that  one  of  those  patents  was  so  infringed, 
though  the  others  were  not;  181  and  an  action  brought  for 

Nellis  v.  Mfg.  Co.,  13  F.  R.  451,  Electric  Mfg.  Co.,  169  F.  R.  832, 

1882;  Lilliendahl  v.  Detweller,  18  1909;  Robinson  v.  Chicago  Rys. 

F.    R.    177,    1883;   Consolidated  Co.,  174  F.  R.  40,  1909;  Luten  v. 

Electric    Light    Co.    v.    Electric  Dover    Construction    Co.,     189 

Light  Co.,  20  F.  R.  502,   1884;  F.  R.  405,  1911. 

Griffith  v.  Segar,  29  F.  R.  707,  178  Rose    Mfg.    Co.    v.    E.    A. 

1887;    Diamond    Match    Co.    v.  Whitehouse  Mfg.  Co.,  193  F.  R. 

Ohio  Match  Co.,  80  F.  R.   117,  69,  1911. 

1897;  Wilkins  Shoe-Button  Fas-  179  Adrian   Wire  Fence  Co.   v. 

tener  Co.  v.  Webb,  89  F.  R.  992,  Jackson   Fence   Co.,    190  F.    R. 

1898;    Continental    Gin    Co.    v.  195,  1911. 

F.   H.   Lummus  Sons'   Co.,   110  180Reece  Folding  Machine  Co. 

F.  R.  390,  1901;  Edison  Phono-  v.  Earl  &  Wilson,  205  F.  R.  539, 

graph  Co.  v.  Victor  Talking  Mach.  1913. 

Co.,  120  F.  R.  305,  1903;  Electric  181  Matthews  v.  Mfg.   Co.,   18 

Goods    Mfg.    Co.    v.    Benjamin  Blatch.  86,  1880;  Green  v.  City  of 


512  COURTS,    PARTIES,    CAUSES         [CHAP.    XVII. 

alleged  unlawful  making,  using,  and  Belling  may  be  sus- 
tained by  <i\  idence  of  either  of  those  three  sorts  of  infringe- 
ment.182 So  also,  an  action  may  be  based  on  infringement 
committed  during;  the  first  term,  and  on  infringement 
committed  during  an  extended  term,  of  any  patent,  and 
may  be  sustained  on  proof  of  either  or  both  of  those  in- 
fringements. And  several  actions  may  be  based  on  several 
infringements. of  the  same  patent,  committed  at  different 
times  by  the  same  infringer.183  It  has  also  been  held  that 
one  action  will  lie  for  an  infringement  of  a  patent  and  an 
infringement  of  a  trade-mark,  where  the  trade-mark 
and  the  patent  were  both  infringed  together,181  and  also 
that  a  bill  will  lie  for  both  infringement  of  patent  and 
unfair  competition  by  the  infringement,  and  furthermore 
that  the  Federal  court  has  jurisdiction  of  the  cause  of 
action  for  unfair  competition  even  though  the  parties 
are  citizens  of  the  same  State,  if  the  acts  of  infringement 
constitute  the  acts  of  unfair  competition.185 

A  bill  by  the  equitable  owner  of  a  patent  against  the 
holder  of  the  legal  title,  to  compel  a  transfer  of  the  patent 
and  for  infringement  of  the  same  patent  is  not  multi- 
farious.186 

Lynn,  81  F.  R.  387,  1897;  Chis-  Fleece  Underwear  Co.,  60  F.  R. 

holm  v.  Johnson,  106  F.  R.  211,  622,  1894. 

1901.  185T.   B.   Woods  Sons'   Co.  v. 

182  Locomotive  Truck  Co.  v.  Valley  Iron  Works,  166  F.  K. 
Railway  Co.,  10  Blatch.  293,  770,  1909;  Onondaga  Indian  Wig- 
1872.  warn    Co.    v.    Ka-noo-no    Indian 

183  Roemer    v.     Neumann,     23  Mfg.  Co.,  182  F.  R.  832,  1910. 

F.  R.  447,  1885.  1S8  Prest-O-Lite    Co.    v.   Avery 

184  Jaros     Underwear     Co.     v.      Portable  Lighting  Co.,  164  F.  R. 

60,  1908. 


CHAPTER  XVIII 


ACTIONS   AT   LAW 


421.  Forms    of    actions    tor    in- 

fringement. 
421a.    Actions    for    fraudulently 
procuring  patent. 

422.  Declarations  in  trespass  on 

the  case. 

423.  The  statement  of  the  right 

of  action,  in  respect  of  the 
inventor. 

424.  In  respect  of  the  novelty  and 

utility  of  the  invention. 

425.  In  respect  of  the  absence  of 

public  use  or  sale  more 
than  two  years  before  ap- 
plication for  a  patent. 
428.  In  respect  of  the  patentee, 
where  he  is  another  than 
the  inventor. 

427.  In  respect  of  the  application 

for  the  patent. 

428.  In    respect    to    the    letters 

patent. 

429.  In  respect  of  a  reissue. 

430.  In  respect  of  a  disclaimer. 

431.  In  respect  of  an  extension. 

432.  In  respect  of  the  plaintiff's 

title. 

433.  In  respect  of  profert  of  title. 
433a.  In  respect  of  marking  "pat- 
ented." 

434.  In  respect  of  infringement. 

435.  In  respect  of  the  time  of  in- 

fringement. 


438. 


439. 
440. 


436.  In  respect  of  the  damages. 

437.  The  conclusion  of  the  dec- 

laration. 

Substantial  and  not  tech- 
nical accuracy  required  in 
declarations. 

Dilatory  pleas. 

Twenty-seven  defences 

pleadable  in  bar  in  patent 
actions. 

441.  The  twenty-seven  defences 

reviewed  in  respect  of 
their  natures  and  effects. 

442.  Special  pleading. 

443.  The    general    issue    accom- 

panied by  a  statutory  no- 
tice of  special  matter. 

Notices  of  special  matter. 

Defences  based  on  facts  of 
which  courts  take  judi- 
cial notice,  need  not  be 
pleaded. 

The  first  and  second  de- 
fences. 

The  third  defence. 

The  fourth  defence. 

The  fifth  and  sixth  defences. 

450.  The  seventh  defence. 

451.  The  eighth  defence. 

452.  The   ninth    and    tenth    de- 

fences. 

453.  The  eleventh  defence. 

454.  The  twelfth  defence. 

513 


444. 
445. 


446. 

447. 

448. 
449. 


514 


ACTIONS   AT   LAW 


[CHAP.    XVIII. 


455.  The  thirteenth  defence. 

456.  The  fourteenth  defence. 

457.  The  fifteenth  defence. 
45S.  The  sixteenth  defence. 

459.  The  seventeenth  defence. 

460.  The  eighteenth  defence. 
161.  The  nineteenth  defence. 

462.  The  twentieth  defence. 

463.  The  twenty-first  defence. 

464.  The  twenty-second  defence. 

465.  The       twenty-third       and 

twenty-fourth  defences. 

466.  The  twenty-fifth  defence. 

467.  The    twenty-sixth    defence: 

estoppel. 

468.  Estoppel  by  matter  of  record : 

res  judicata. 

469.  Estoppel  by  matter  of  deed. 

470.  The    twenty-sixth    defence; 

how  pleaded. 

471.  The  twenty-seventh  defence; 

statutes  of  limitations. 

472.  The  national  statute  of  limi- 

tation. 

476.  State  statutes  of  limitations 

do  not  apply  to  any  right 
of  action  which  is  attended 
to  by  a  national  statute  of 
limitation. 

477.  State  statutes  do  apply  to 

all  rights  of  action  which 
are  not  attended  to  by  a 
national  statute  of  limita- 
tion. 
477a.  The  twenty-eighth  de- 
fence. 

478.  Replications,  rejoinders,  and 

sur-rejoinders,  where  li- 
censes or  releases  are 
pleaded. 


481.  The  similiter. 

482.  Demurrers. 

483.  Demurrers       to       declara- 

tions. 

484.  Demurrers  to  pleas. 

486.  Joinders  in  demurrer. 

487.  Trial  of  actions  at  law  for 

infringement  of  patents. 

488.  Trial  by  jury. 

489.  Rules  of  practice. 

490.  Rules  of  evidence. 

491.  Letters  patent  as  evidence. 

492.  Reissue  letters  patent  as  evi- 

dence. 

494.  Letters  patent  presumed  to 

be  in  force  till  the  end  of 
the  term  expressed  on 
their  face. 

495.  Evidence  of  title. 

496.  Neither    licenses,     nor    re- 

leases, need  be  negatived 
in  a  plaintiff's  prima  facie 
evidence. 

497.  Evidence  of  the  defendant's 

doings. 

498.  Expert  evidence  of  infringe- 

ment. 

499.  Hypothetical   questions   for 

experts. 

500.  Expert    testimony    relevant 

to  the  state  of  the  art. 

501.  Cross-examination     of     ex- 

perts. 

502.  Evidence  of  damages. 

503.  Defendant's      evidence      in 

chief. 

504.  Evidence  to  sustain  the  first 

defence. 

505.  To  sustain  the  second  de- 

fence. 


CHAP.    XVIII.] 


ACTIONS    AT    LAW 


515 


506.  To  sustain  the  third  defence, 

when  based  on  prior  pat- 
ents. 

507.  When  based  on  prior  printed 

publications. 

508.  When  based  on  prior  knowl- 

edge or  use. 

509.  Rebutting   evidence  to  the 

third  defence,  when  based 
on  prior  knowledge  or  use. 

510.  Rebutting   evidence  to   the 

third     defence,     however 
based. 

511.  Evidence     to     sustain     the 

fourth  defence. 

512.  To  sustain  the  fifth  defence. 

513.  The  sixth  defence. 

514.  The  seventh  defence. 

515.  The  eighth  defence. 

516.  The  ninth  defence. 

517.  The  tenth  defence. 

518.  The  eleventh  defence. 

519.  The  twelfth  defence. 

520.  The  thirteenth  defence. 

521.  The  fourteenth  defence. 

522.  The  fifteenth  defence. 

523.  The  sixteenth  defence. 

524.  The  seventeenth  defence. 

525.  The  eighteenth  defence. 

526.  The  nineteenth  defence. 

527.  The  twentieth  defence. 

528.  The  twenty-first  defence. 

529.  The  twenty-second  defence. 

530.  The  twenty-third  defence. 

531.  The  twenty-fourth  defence. 


532.  The  twenty-fifth  defence. 

533.  The  twenty-sixth  defence. 

534.  The  twenty-seventh  defence. 
534a.  The  twenty-eighth  defence. 

535.  How  testimony  is  taken  in 

actions  at  law.' 

536.  When  the  judge  may  direct 

the  jury  to  return  a  ver- 
dict for  the  defendant. 

537.  Instructions  to  juries. 

538.  Verdicts. 

539.  New  trials. 

540.  Trials  by  a  judge  without  a 

jury. 

541.  Trial  by  referee. 

542.  Judgments. 

543.  Costs. 

544.  Costs  under  the  statutes  and 

rules. 

545.  Attornej^'s  docket  fees. 

546.  Clerk's  fees. 

547.  Magistrate's  fees. 

548.  Witness  fees. 

549.  Taxation  of  costs. 

550.  Writs  of  error. 

551.  Bills  of  exception. 

552.  Erroneous  instructions,  and 

refusals  to  instruct. 

553.  Exception    to    instructions, 

and  to  refusals  to  in- 
struct. 

554.  Time  when  exceptions  must 

be  noted,  and  time  when 
bills  of  exception  must  be 
drawn  up  and  signed. 


§  421.  One  section  of  the  Revised  Statutes  provides 
that  "  Damages  for  the  infringement  of  any  patent  may  be 
recovered  by  action  on  the  case."1    Another  section  pro- 

1  Revised  Statutes,  Section  4919. 


516  MOTIONS    AT    i,\\\  |<  IHAP.    Will. 

vides  thai  "The  practice,  pleadings]  ami  forms  and  modes 
of  proceeding  in  civil  causes,  other  than  equity  and  ad- 
miralty causes,  in  the  circuit  and  district  courts,  shall 
conform,  .-is  near  as  may  be,  to  the  practice,  pleadings,  and 
forms  and  modes  of  proceeding  existing  at  the  time  in 
like  causes  in  the  courts  of  record  of  the  State,  within 
which  such  circuit  or  district  courts  are  held,  any  rule  of 
court  to  the  contrary  notwithstanding."'-  Both  these  ap- 
parently inconsistent:  provisions  are  contained  in  the  same 
enactment.  They  must  therefore  be  construed  together; 
and  effect  must  be  given  to  both.  This  result  is  reached 
by  following  Section  4919  as  far  as  it  necessarily  goes,  and 
by  conforming  in  other  respects  to  Section  914. 3  With 
this  view,  it  has  been  held  that  the  complaints  and  peti- 
tions which  are  prescribed  for  civil  actions  by  the  codes 
of  sundry  of  the  States,  may  be  used  in  bringing  actions 
on  the  case  for  infringements  of  patents  in  Federal  courts 
sitting  in  those  States,  respectively; 4  and  indeed,  in  one 
case,  it  has  been  held  that  the  forms  of  pleading  and  pro- 
cedure in  such  an  action  in  a  Federal  court  should  be  the 
same  as  those  employed  in  civil  actions  in  the  State  courts 
of  the  State  in  which  that  Federal  court  is  located.5  But 
in  a  later  case,  it  has  been  decided,  that  the  pleadings 
in  an  action  at  law,  for  infringement  of  a  patent,  should 
conform  to  the  common  law,  even  in  a  code  State;6  and 
inasmuch  as  many  of  the  States  still  employ  common-law 
actions  and  pleadings  in  their  own  courts,  it  is  necessary 
for  pleaders  to  accurately  know  the  proper  characteristics 

2  Revised  Statutes,  Section  914.  5  Celluloid  Mfg.  Co.  v.  Zylonite 

»  Cottier  v.  Stimson,  18  F.  R.  Co.,  34  F.  R.  744,  1888. 

690,  1883.  6  Myers    v.     Cunningham,    44 

*  May  ?'.  County  of  Mercer.  30  F.  R.  349,  1890. 

F.  R.  250,  1887. 


chap.   xvin. |  actions    \r   law  .r)17 

of  a  declaration,  in  an  action  of  trespass  on  the  case,  for 
the  infringement  of  a  patent. 

§  421a.  An  action  at  law  lies  for  damages  against  one 
who  fraudulently  procures  a  patent  for  an  invention  which 
in  fact  was  made  by  another.7 

§  422.  The  proper  parts  of  such  a  declaration  are  the 
following:  1.  The  title  of  the  court.  2.  The  title  of  the 
term.  3.  The  venue.  4.  The  commencement.  5.  The 
statement  of  the  right  of  action.    6.  The  conclusion. 

The  true  title  of  the  United  States  District  Court  estab- 
lished in  Connecticut  is  "  District  Court  of  the  United 
States  for  the  District  of  Connecticut,"  and  the  title  of 
the  district  court  which  is  established  in  any  other  district 
is  the  same,  except  as  to  the  name  of  the  district.8 

The  proper  term  of  the  court  in  which  to  entitle  the 
declaration,  is  the  term  at  which  the  appearance  of  the 
defendant  is  due.9  It  is  unnecessary  to  entitle  a  declara- 
tion in  the  name  of  the  case  in  which  it  is  filed;  though  it 
is  convenient  to  indorse  that  name  on  the  back  of  the 
declaration,  for  the  purpose  of  enabling  the  document 
to  be  readily  found  in  a  file. 

The  venue  should  be  laid  in  the  district,  and  division  if 
any,  where  the  action  is  commenced,  regardless  of  the  dis- 
trict or  districts  wherein  the  infringement  was  com- 
mitted.10 

The  commencement  contains  a  statement  of  the  names 
of  the  parties  to  the  action,  and  of  the  capacity  in  which 
they  respectively  sue  or  are  sued,  if  it  is  other  than  a 
natural  personal  capacity.  Though  it  is  probably  unneces- 
sary, it  is  undoubtedly  prudent  to  state  the  nation  of  which 

7  Le  Brocquc  v.  Childs,  158  9  1  Chitty  on  Pleading,  loth 
F.  R.  412,  1908.                                    American  Edition,  p.  263. 

8  Judicial  Code,  Section  1.  10  McKenna  v.  Fisk,  1  Howard, 

248,  1843. 


,*)1S  ACTIONS    \T    LAW  [CHAP.    will. 

the  parties  are  respectively  citizens,  and  if  thai  nation 
is  the  United  States,  to  allege  also  the  particular  State 
of  which  the  parties  are  citizens  respectively.  Where 
either  party  is  a  corporation,  thai  fad  must  be  stated,  and 
the  name  of  the  State  or  other  sovereignty  wherein  it  was 
created  and  exists  should  also  be  alleged.  The  commence- 
ment properly  closes  with  a  brief  recital  thai  the  form  of 
action  is  that  of  trespass  on  the  case. 

§  423.  The  statement  of  the  right  of  action  should  con- 
tain the  name  and  residence  and  citizenship  of  the  inventor, 
upon  whose  application  the  patent,  on  which  the  action 
is  based,  was  granted. 

§  424.  The  novelty  and  the  utility  of  the  invention  must 
be  put  in  issue  by  proper  averments  in  the  declaration;  " 
winch  averments  include  not  only  the  general  statement 
that  the  invention  was  new  and  useful,  but  also  those 
details  of  the  elements  of  novelty  wrhich  are  defined  by  the 
statute,12  and  wThich  consist  in  actual  newness  in  this 
country,  and  technical  novelty  throughout  the  world. 
But  it  is  not  necessar}^  to  state  the  particular  time  at  which 
the  invention  was  made,  so  that  it  appears  to  have  been 
made  before  the  application  for  the  patent  was  filed.13 

§  425.  The  statement  of  the  right  of  action  must  also 
aver  that  the  invention  was  not  in  public  use  or  on  sale 
in  this  country  for  more  than  two  years  before  the  inven- 

11  Coop  v.  Development  In-  692;  Diamond  Match  Co.  v. 
stitute,  47  F.  R.  900,  1891;  Over-  Ohio  Match  Co.,  80  F.  R.  117, 
man  Wheel  Co.  v.  Elliott  Cycle  1897;  Rubber-Tire  Wheel  Co.  v. 
Co.,  49  F.  R.  859,  1892;  Goebel  v.  Davie,  100  F.  R.  85,  1900;  Elliott 
Supply  Co.,  55  F.  R.  827,  1893;  &  Hatch  Book-Typewriter  Co.  v. 
Ross  v.  Ft.  Wayne,  58  F.  R.  407,  Fisher  Typewriter  Co.,  109  F.  R. 
1893.  330,  1901. 

12  Revised  Statutes,  Section  "Wilder  v.  McCormick,  2 
4886,  as  amended  March  3,  1897,  Blatch.  31,  1846. 

Chapter  391,  Section  1,  29  Stat. 


CHAP.    XVIII.]  ACTIONS    AT    LAW  519 

tor's  application  for  the  patent.14  And  where  a  declara- 
tion is  based  on  a  patent  which  was  applied  for  after  1897, 
the  statement  of  the  right  of  action  must  likewise  aver 
that  the  invention  was  not  patented  or  described  in  any 
printed  publication,  more  than  two  years  prior  to  the 
application  for  that  patent.15 

§  426.  If  the  patentee  is  neither  a  party  to  the  action, 
nor  the  inventor  of  the  thing  or  process  covered  by  the 
patent,  it  is  natural  and  proper  to  separately  state  his 
name  in  order  to  fully  and  surely  identify  the  patent.  It 
is  well  also  to  state  his  residence  and  his  citizenship, 
though  there  is  no  requirement  of  law  on  either  of  these 
points. 

§  427.  It  is  not  necessary  to  state  in  a  declaration  the 
particulars  of  the  application  for  the  letters  patent,  nor 
the  particulars  of  the  proceedings  of  the  Patent  Office 
in  considering  that  application ; 16  nor  to  make  any  state- 
ment about  any  application,  except  that  the  letters  patent 
were  granted  upon  the  application  of  the  inventor  named 
in  the  declaration.17 

§  428.  The  declaration  may  indicate  the  letters  patent 
in  the  language  of  the  grant,  and  make  profert  thereof; 
and  if  that  is  done,  it  is  not  necessary  to  set  out  the  speci- 

14  Revised     Statutes,     Section  15  Revised     Statutes,     Section 

4886;  Gandy  v.  Belting  Co.,  143  4886,  as  amended  March  3,  1897; 

U.  S.  592,  1892;  Gray  v.  James,  1  29    Statutes    at    Large,   p.   692, 

Peters'    Circuit    Court    Reports,  Ch.  391,  Section  1;  Rubber-Tire 

482,    1817;    Blessing    v.    Copper  Wheel  Co.  v.  Davie,  100  F.  R,  85, 

Works,    34    F.    R.    754,    1888;  1900. 

Nathan   Mfg.    Co.   v.    Craig,   47  16  Cutting  v.  Myers,  4  Washing- 

F.    R.    522,    1891;    Consolidated  ton,  221,  1818. 

Brake-Shoe  Co.  v.  Detroit  Spring  17  Wilder     v.     McCormick,     2 

Co.,  47  F.  R.  895,  1890;  Hayes-  Blatch.  31,  1846;  Luten  v.  Dover 

Young,  etc.,  Co.  v.  St.  Louis  Tran-  Construction  Co.,  189  F.  R.  405, 

sit  Co.,  137  F.  R.  80,  1905.  1911. 


f>20  ACTIONS    AT     LAW  |<   MAP.     Will. 

lication  either  verbatim  or  substantially;  u  for  the  profert 

imports  the  patent,  by  implication  into  the  declaration.1'1 
Wliere  a  declaration  is  based  on  a  patent  which  woA 
granted  before  April  11,  1902,  the  declaration  must  state 
that  the  letters  patent  were  issued  in  the  name  of  the 
United  States  of  America,  under  the  seal  of  the  Patent 
Office,  and  were  signed  by  the  Secretary  of  the  Interior, 
or  an  Assistant  Secretary  of  the  Interior,  as  the  case  may 
be,  and  countersigned  by  the  Commissioner  of  Patents, 
and  that  they  were  delivered  to  the  patentee.20  And 
where  a  declaration  is  based  on  a  patent  granted  after 
April  11,  1902,  the  declaration  must  state  that  the  letters 
patent  were  issued  in  the  name  of  the  United  States  of 
America,  under  the  seal  of  the  Patent  Office,  and  were 
signed  by  the  Commissioner  of  Patents.21 

Inasmuch  as  patents  are  granted  for  various  spaces  of 
time,  it  is  necessary  to  state  the  particular  term  for  which 
the  letters  patent  in  suit  were  issued.  It  is  necessary  also 
to  plead  the  legal  effect  of  the  patent,  by  saying  that  it 
did  grant  to  the  patentee,  his  heirs  or  assigns,  the  exclusive 
right  to  make,  use  and  vend  the  invention  covered  thereby, 
throughout  the  United  States  and  the  Territories  thereof.22 
§  429.  Where  the  patent  upon  wThich  the  action  is  based 
is  a  reissue,  the  original  letters  patent  should  be  set  forth 
precisely  as  though  no  surrender  and  reissue  had  occurred ; 
and  in  addition  thereto,  it  is  proper  to  state  the  particular 
kind  of  defect  which  made  the  original  a  proper  subject 
of  a  reissue;  and  to  state  also  that  such  defect  arose  from 

18  Cutting  v.  Myers,  4  Washing-  p.  40;  Cutting  v.  Myers,  4  Wash- 
ton,  223,  1818.  ington,  222,  1818. 

19  Graham  v.  Earl,  82  F.  R.  737,  21  32  Statutes  at  Large,  Part  I, 
1897;  Dyer  v.  Cryder,  153  F.  R.  page  95,  Ch.  417. 

767,  1907.  22  Revised     Statutes,     Section 

-°  Revised     Statutes,     Section      4884. 
4883;  25  Statutes  at  Large,  Ch.  15, 


CHAP.    XVIII.]  ACTIONS    AT    LAW  521 

inadvertence,  accident,  or  mistake,  as  the  case  may  be,  and 
without  any  fraudulent  or  deceptive  intention;  and  to 
state  that  the  original  patent  was  surrendered,  and  who 
surrendered  it;  and  to  state  that  the  Commissioner  of 
Patents  caused  a  new  patent  to  be  issued  for  the  same 
invention;  and  to  state  finally  the  name  of  the  person  to 
whom  such  new  patent  was  granted.  These  particular- 
lie  at  the  foundation  of  the  right  of  the  grantee  of  a  reissue 
patent  to  receive  such  a  grant;  and  although  the  reissue  is 
prima  facie  evidence  that  the  truth  on  all  these  points 
is  favorable  to  the  validity  of  the  patent,  it  is  none  the  less 
proper  to  put  those  facts  in  issue  by  proper  pleading.  And 
it  is  hardly  prudent  to  venture  a  case  on  a  more  indefinite 
form  of  pleading;  though  a  more  indefinite  form  of  plead- 
ing has  once  been  held  sufficient  in  such  a  case.23 

§  430.  Where  a  disclaimer  has  been  filed,  that  fact 
ought  to  be  stated  in  the  declaration,  and  its  legal  effect 
ought  to  be  indicated,  because  disclaimers  constitute 
amendments  of  original  patents,  and  operate  to  vary  their 
scope.21  In  such  a  case  also,  the  declaration  ought  to  state 
that  the  disclaimer  was  filed  without  unreasonable  delay, 
because  that  fact  is  necessary  to  the  right  of  a  patentee 
to  maintain  a  suit  on  a  patent  which  required  a  disclaimer.  '-'•'' 

§  431.  Where  the  patent  in  suit  has  been  extended  by  a 
special  Act  of  Congress,  and  where  the  suit  is  partly  or 
wholly  based  on  such  extension,  the  declaration  must 
state  the  legal  effect  of  the  Act  of  extension,  and  it  must 
specially  show  the  particular  space  of  time  covered 
thereby. 

§  432.  Where  the  plaintiff  is  an  assignee  or  grantee  of 

23  Spaeth  v.  Barney,  22  F.  R.  25  Revised  Statutes,  Section 
828,  1885.                                            4922. 

24  Revised     Statutes,     Section 
4917. 


522  ACTIONS    AT    LAW  [CHAP.    Will. 

the  patentee,  it  is  safer  to  set  forth  all  the  mesne  assign- 
ments or  grants  down  to  him,  than  merely  to  state  that  the 
exclusive  right  which  was  infringed  by  the  defendant ,  came 
to  the  plaintiff  by  assignment  or  by  grant.  And  a  declara- 
tion must  not  only  state  how  and  when  the  plaintiff  became 
the  owner  of  the  patent  right,  but  must  also  allege  owner- 
ship during  the  time  of  the  infringement  upon  which  the 
declaration  is  based.  Title  papers  should  be  set  forth  by 
their  legal  effect,  and  not  be  copied  bodily  in  the  declara- 
tion. 

§  433.  No  profert  need  be  made  in  any  declaration,  of 
any  assignment  or  grant  of  any  interest  under  letters 
patent.  But  where  the  title  papers  of  a  plaintiff  include 
letters  testamentary  or  letters  of  administration,  he  must 
make  profert  of  those  documents.  If  profert  is  made  of 
any  document  of  which  it  is  not  necessary,  it  will  be 
treated  as  surplusage,  and  will  not  entitle  the  defendant 
to  oyer. 

§  433a.  The  declaration  must  state,  either  that  no 
person  ever  made  or  sold  the  patented  article  under  the 
authority  of  the  patent;  or  that  such  of  the  patented  ar- 
ticles as  were  thus  made  or  sold,  had  the  word  "patented," 
together  with  the  day  and  year  the  patent  wras  granted, 
fixed  thereon,  or  when,  from  the  character  of  the  article, 
this  could  not  be  done,  then  to  the  package  wherein  one 
or  more  of  them  was  enclosed;  or  otherwise  that  the  de- 
fendant was  duly  notified  that  his  doings  were  an  infringe- 
ment of  the  patent,  and  continued,  after  such  notice,  to 
infringe.26 

§  434.  The  statement  of  infringement  should  allege  that 

the  defendant,  without  any  license,  did  make,  or  that  he 

did  use,  or  that  he  did  sell,  the  subject  of  whatever  claim 

or  claims  of  the  patent  the  plaintiff  intends  to  prosecute 

28  Dunlap  v.  Schofield,  152  U.  S.  244,  1894. 


CHAP.    XVIII.]  ACTIONS   AT   LAW  523 

at  the  trial;  and  that  the  infringement  occurred  within 
the  territory  covered  by  the  plaintiff's  title  to  the  patent, 
and  within  the  time  during  which  the  plaintiff  held  the 
title  within  that  territory,  and  contrary  to  the  statutes  of 
the  United  States,  in  such  cases  made  and  provided. 

While  an  allegation  of  either  making,  using,  or  selling 
will  be  sufficient  in  a  declaration  to  show  a  cause  of  action, 
no  allegation  of  any  one  of  these  kinds  of  infringement  will 
support  evidence  of  either  of  the  others.  A  declaration 
ought  therefore  to  allege  as  many  of  them  as  the  plaintiff 
has  any  expectation  of  being  able  to  prove. 

§  435.  The  time  of  the  infringement  is  properly  stated, 
by  alleging  that  it  occurred  on  a  specified  day,  and  on 
divers  other  days  between  that  day  and  some  later  speci- 
fied date;  and  no  plaintiff  will  be  permitted  to  prove  in- 
fringement outside  of  the  space  of  time  which  he  specified 
in  his  declaration.27  It  is,  however,  held  that  it  is  not 
necessary  for  plaintiff  to  plead  the  six-year  statutory 
period  within  which  infringement  must  be  shown  to  have 
taken  place  in  order  to  justify  a  recovery  27a  since  although 
the  statute  does  not  create  a  true  statute  of  limitations 
but  on  the  contrary  creates  a  condition  of  the  right  of 
recovery,  nevertheless  the  fact  that  no  infringements  have 
taken  place  within  the  statutory  period  is  a  matter  of 
defence.  Furthermore,  the  defendant  need  not  specially 
plead  the  restriction  but  may  avail  himself  of  it  if  it  ap- 
pears in  the  plaintiff's  case  that  no  infringements  have 
taken  place  within  that  period,  or  the  defendant  may 
prove  the  facts  on  his  own  behalf.28  This  rule,  of  course, 
applies  equally  well  to  appeals  in  equity  when  an  account- 

27  Eastman  v.  Bodfish,  1  Stciy,  2?a  Act   March  3,  1897,  Chap. 

530,  1841;  LePage  Co.  v.  Russia  391,  29  Statutes,  694. 

Cement    Co.,    51     F.    R.     949,  28  Peters  v.  Hanger,  134  F.  R. 

1892.  586,  1904. 


524  \ctio\s   \t  i.wv  |ch.\i>.  win. 

ing  of  damages  and  profits  is  Bougfat.W  Repeated  infringe- 
ments may  be  sued  lor  in  one  ad  ion;  ;"  hut  all  of  the  in- 
fringements complained  of  in  one  declarat ion  must  have 
been  committed  alter  the  plaintiff  obtained  the  title  to 
the  patent,  and  before  the  beginning  of  the  action.  Where 
the  plaintiff  is  an  assignee,  and  where  he  not  only  has  rights 
of  action  against  the  defendant,  for  infringements  com- 
mitted after  the  date  of  his  assignment,  but  also  has 
purchased  rights  of  action  against  the  same  party,  for 
infringements  committed  before  such  purchase,  he  must, 
if  he  sues  at  law,  bring  a  separate  action  for  the  latter 
causes,  and  must  bring  that  action  in  the  name  of  the 
person  who  owned  the  patent  at  the  time  they  accrued. 

§  436.  The  damages  incurred  by  the  plaintiff  on  account 
of  a  defendant's  infringement  must  be  stated  specially,  be- 
cause no  particular  damage  necessarily  arises  from  in- 
fringements of  patents,  and  therefore  none  is  implied  by 
the  law.31  The  special  damages  to  be  alleged  in  any 
particular  case  depend  upon  the  circumstances  of  that 
case:  depend  upon  the  particular  criterion  of  damages 
upon  which  the  plaintiff  relies.  The  various  measures  of 
damages  in  patent  cases  are  stated  and  explained  in  the 
nineteenth  chapter  of  this  book.  One  or  more  of  them 
will  be  found  to  be  applicable  to  every  case  which  is  likely 
to  arise.  From  among  them,  the  pleader  may  select  those 
which  he  expects  to  be  able  to  prove  to  be  pertinent,  and 
may  then  draw  his  special  statement  of  damages  accord- 
ingly. Such  a  special  statement  is  required  by  the  sub- 
stantial principles  of  pleading,  as  well  as  by  its  technical 
rules.  Without  it,  the  defendant  would  not  be  apprised 
of  all  the  issues  of  the  case.    He  would  not  know,  till  the 

29  See  Section  579.  K  1  Chitty  on  Pleading,  396. 

30  Wilder     r.     McCormick,     2 
Blatch.  32,  1846. 


(II  \  I'.    XVril.]  ACTIONS    AT    LAW  $25 

day  of  trial,  whether  the  plaintiff  would  prove  an  estab- 
lished royalty,  or  would  prove  loss  or  reduction  of  his 
sales,  or  would  prove  reduction  of  his  prices,  as  the 
criterion  of  his  damages.  The  defendant  would  therefore 
have  to  go  to  court  provided  with  witnesses  on  all  these 
points,  or  would  have  to  trust  his  sagacity,  and  guess 
which  of  these  points  he  would  be  called  upon  to  meet. 
It  was  to  prevent  such  inconveniences  that  written  plead- 
ings were  originally  designed;  and  for  the  same  purpose, 
among  others,  they  are  still  retained  in  actions  in  courts. 

§  437.  The  conclusion  of  a  proper  declaration  in  a  patent 
case  alleges  that,  by  force  of  the  statutes  of  the  United 
States,  a  right  of  action  has  accrued  to  the  plaintiff  to  re- 
cover the  actual  damages  which  the  declaration  specifies, 
and  such  additional  amount,  not  exceeding  in  the  whole 
three  times  the  amount  of  such  actual  damages,  as  the 
court  may  see  fit  to  adjudge  and  order,  besides  costs.  The 
conclusion  ends  with  the  ancient  allegation  of  bringing 
suit. 

§  438.  A  declaration,  though  not  drawn  in  due  form,  is 
sufficient  for  practical  purposes,  if  it  contains  all  that  is 
essential  to  enable  the  plaintiff  to  give  evidence  of  his 
right,  and  of  its  violation  by  the  defendant,  and  affords 
to  the  defendant  the  opportunity  of  interposing  every 
defence  allowed  to  him  by  law.32  Courts  do  not  encourage 
merely  technical  objections  to  pleadings,  and  even  on 
special  demurrer,  will  seek  to  sustain  those  which,  though 
not  technically  accurate,  are  substantially  sufficient  for 
the  real  purposes  of  pleading. 

§  439.  Dilatory  pleas  in  patent  actions  are  not  mate- 
rially different  in  their  nature  and  operation  from  corre- 
sponding pleas  in  other  common-law  cases.  It  is  therefore 
unnecessary  to  treat  those  preliminary  defences  in  this 

"  Wilder  v.  McCormick,  2  Blateh.  37,  1846. 


526  ACTIONS    \ T    LAW  [CHAP.    Will. 

hook.  Recourse  may  be  had  to  the  standard  works  on 
common-law  pleading  for  whatever  information  the  patent 
pleader  may  require  upon  the  subject. 

§  440.  The  defences  which  are  pleadable  in  bar  to  an 
action,  are  very  numerous  in  the  patent  law,  and  most  <  >f 
them  are  peculiar  to  this  branch  of  jurisprudence.  Where 
the  facts  appear  to  warrant  so  doing,  a  defendant  may 
plead:  1.  That  the  matter  covered  by  the  letters  patent 
was  not  a  statutory  subject  of  a  patent:  or  2.  That  it  was 
not  an  invention:  or  3.  That  it  was  not  novel  at  the  time 
of  its  alleged  invention:  or  4.  That  it  was  not  useful  at 
that  time:  or  5.  That  the  inventor  actually  abandoned 
the  invention:  or  6.  That  he  constructively  abandoned  it, 
by  not  applying  for  a  patent  on  it,  during  the  time  allowed 
by  the  statutes  for  such  an  application  to  be  made:  or 
7.  That  the  invention  claimed  in  the  original  patent  is 
substantially  different  from  any  indicated,  suggested,  or 
described  in  the  original  application  therefor:  or  8.  That 
the  patentee  surreptitiously  or  unjustly  obtained  the 
patent  for  that  which  was  in  fact  the  invention  of  another, 
who  was  using  reasonable  diligence  in  adapting  and  per- 
fecting the  same:  or  9.  That  the  invention  was  made  by 
another  jointly  with  the  sole  applicant:  or  10.  That  it 
was  made  by  one  only  of  two  or  more  joint  applicants:  or 
11.  That  for  the  purpose  of  deceiving  the  public,  the  de- 
scription and  specification  filed  in  the  Patent  Office  was 
made  to  cover  less  than  the  wrhole  truth  relevant  to  the 
invention,  or  was  made  to  cover  more  than  was  necessary 
to  produce  the  desired  effect:  or  12.  That  the  description 
of  the  invention  in  the  specification  is  not  in  such  full, 
clear,  concise,  and  exact  terms  as  to  enable  any  person 
skilled  in  the  art  or  science  to  which  it  appertains,  or  with 
which  it  is  most  nearly  connected,  to  make,  construct, 
compound,  and  use  the  same:  or  13.  That  the  claims  of 


CHAP.    XVIII.J  ACTION'S    AT  (LAW  527 

the  patent  are  not  distinct :  or  14.  That  the  patentee  un- 
reasonably delayed  to  enter  a  needed  disclaimer:  or  15. 
That  the  original  patent  was  surrendered  and  reissued  in 
the  absence  of  eveiy  statutory  foundation  thereof:  or 
16.  That  the  claims  of  the  reissue  patent  in  suit  are 
broader  than  those  of  the  original,  and  that  the  reissue 
was  not  applied  for  till  a  long  time  had  elapsed  after  the 
original  was  granted:  or  17.  That  the  reissue  patent  in  suit 
covers  a  different  invention  from  any  which  the  original 
patent  shows  was  intended  to  be  secured  thereby:  or  18. 
That  the  invention  claimed  in  the  original  patent,  is  sub- 
stantially identical  with  an  invention  claimed  in  a  prior 
patent  granted  on  the  application  of  the  same  inventor: 
or  19.  That  the  patent  was  repealed :  or  20.  That  the  patent 
legally  expired  before  the  alleged  infringement  began,  or 
before  it  ended:  or  21.  That  the  patentee  made  or  sold 
specimens  of  the  invention  covered  by  his  patent,  without 
marking  them  "patented,"  and  without  notifying  the 
defendant  of  his  infringement:  or  22.  That  the  plaintiff 
has  no  title  to  the  patent,  or  no  such  title  as  can  enable 
him  to  maintain  the  action:  or  23.  That  the  defendant 
has  a  license,  which  authorized  part  or  all  of  the  doings 
which  constitute  the  alleged  infringement :  or  24.  That  the 
defendant  has  a  release,  discharging  him  from  liability  on 
account  of  part  or  all  of  the  alleged  infringement:  or  25. 
That  the  defendant  is  not  guilty  of  any  infringement  of 
the  patent  upon  which  he  is  sued :  or  26.  That  the  plaintiff 
is  estopped  from  enforcing  any  right  of  action  against  the 
defendant:  or  27.  That  the  cause  of  action  sued  upon,  is 
partly  or  wholly  barred  by  some  statute  of  limitation: 
or  28.  That  the  Commissioner  of  Patents  has  exceeded 
his  legal  authority  in  granting  or  reissuing  the  patent.33 
§  441.  The  first  fourteen  and  the  twenty-eighth  of  these 
33  See  Section  148. 


528  \<    IMOXS    AT    LAW  [CHAP.     Will. 

defences  assail  the  Validity  of  original  patents;  and  either 
of  them,  if  successfully  maintained,  will  defeat  any  such 
p:iieni,  and  therefore  defeal  tiny  action  based  thereon. 
All  of  the  fifteen  are  also  applicable  to  actions  based  upon 
reissue  patents,  for  though  a  defective  or  insufficient 
specification,  or  a  defective  or  insufficient  claim,  or  an 
excessive  claim,  can  be  cured  by  surrender  and  reissue," 
those  faults  arc  sometimes  retained  and  sometimes  in- 
troduced in  reissues. 

The  fifteenth,  sixteenth,  and  seventeenth  of  these 
defences  assail  reissues  as  reissues.  To  what  extent 
those  defences,  if  successful,  will  affect  the  patent,  or  the; 
action,  are  points  which  are  explained  in  the  chapter 
on  reissues.35 

The  eighteenth  defence  assails  the  validity  of  original 
patents,  and  it  may  be  applicable  to  all  the  claims  of  such 
a  patent,  or  it  may  be  applicable  to  only  some  of  them. 
And  a  patent  will  not  be  invalidated  throughout,  by  the 
fact  that  one  or  more  of  its  claims,  less  than  all  of  them, 
must  be  invalidated  on  this  ground,  any  more  than  where 
such  invalidity  arises  out  of  any  other  reason. 

The  nineteenth  defence,  when  true,  will  certainly  be  a 
full  one  to  any  action  based  on  alleged  infringements 
which  were  committed  after  the  repeal  of  the  patent. 
Whether  it  will  be  a  defence  to  any  infringement  com- 
mitted before  that  time,  will  depend  upon  whether  the 
patent  is  repealed  ab  initio,  or  only  in  futuro. 

The  twentieth  defence  will  be  available  against  any 
patent  which  was  applied  for  before  1898,  where  the  de- 
fendant can  prove  that  the  invention  was  patented  with 
the  knowledge  and  consent  of  the  inventor  in  some  for- 
eign country  before  it  was  patented  in  the  United  States, 

34  Revised     Statutes,     Section  35  Sections  221  and  249  of  this 

4916.  book. 


CHAP.    XVIII.]  ACTIONS    AT    LAW  520 

and  that  such  foreign  patent  expired  before  the  United 
States  patent  purported  to  terminate.  This  defence,  if 
successful,  will  not  affect  the  validity  of  the  patent.  It 
will  merely  limit  its  duration  to  less  than  seventeen  years.36 

The  twenty-first  defence,  if  successful,  will  bar  the  ac- 
tion, but  it  will  not  affect  the  patent.  Any  oral  or  written 
notice  of  infringement,  if  given  to  the  defendant  without 
stopping  his  infringement,  will  oust  the  defence  as  to  sub- 
sequent infringements.37 

All  defences  from  the  twenty-first  to  the  twenty- 
seventh  are  without  relevancy  to  the  validity  of  the  pat- 
ent. Either  of  them  may  be  partly  or  wholly  successful, 
according  to  the  circumstances  of  each  action,  regardless 
of  the  success  or  want  of  success  which  may  attend  the 
other  twenty-one. 

§  442.  Such  of  these  defences  as  can  be  established 
from  the  face  of  the  declaration,  or  of  the  letters  patent 
upon  which  the  suit  is  based,  or  can  be  based  upon  a 
fact  of  which  the  court  will  take  judicial  notice,  may  be 
made  by  demurrer;  but  if  so  made  and  overruled,  such  a 
defence  cannot  afterward  be  made  in  a  plea,  without 
leave  of  the  court.38 

The  ancient  rules  of  common-law  pleading  would  re- 
quire a  special  plea  for  either  of  the  twenty-eight  defences 
which  are  enumerated  in  Section  440,  save  only  the  de- 
fence of  non-infringement,  and  sometimes  that  of  want  of 
title.39  But  a  loose  and  unscientific  relaxation  of  that 
part  of  those  rules  crept  at  one  time  into  practical  plead- 
ings, both  in  England  and  America.     The  abuse  was  re- 

36  Section  163  of  this  book.  38  Brickill  v.  Hartford,  57  F.  R. 

37  New  York  Pharmical  Asso-      218,  1893. 

ciation  v.  Tilden,  14  F.  R.  740,  39  Stephen  on  Pleading,  160. 

1882;  Allen  v.  Deacon,  21  F.  R. 
122,  18S4. 


530  \<  TIO.XS    AT    LAW  [(   11  \l'.     Will. 

formed  in  England  in  the  fourth  year  <>f  William  the 
Fourth;  l0  hut   in   the  United  States  it  has  continued, 

except  so  far  as  it  has  been  limited  or  enlarged  by  legis- 
lat  ion  in  particular  States.  But  there  was  never  any  prin- 
ciple which  guided  this  departure  from  the  ancient  law, 
and  therefore  no  foundal  ion  for  any  science  of  the  subject. 
Where  an  authoritative  precedent  can  be  found  for  a 
particular  relaxation,  that  particular  relaxation  must  be 
regarded.  In  the  absence  of  sucli  a  precedent,  the  safe 
and  proper  course  is  to  conform  to  the  ancient  common- 
law  rules,  unless  the  pleader  is  willing  to  risk  his  defence 
upon  the  theory  that  State  statutes  relevant  to  pleadings 
are  binding  on  Federal  courts  when  trying  patent  actions 
of  trespass  on  the  case. 

§  443.  The  patent  statute  provides  that  five  of  the 
twenty-eight  defences  may  be  made  under  the  general 
issue,  accompanied  with  a  certain  statutory  notice  of 
special  matter.41  Those  are  the  defences  which,  in  Sec- 
tion 440  of  this  book,  are  numbered  three,  five,  six,  eight, 
and  eleven,  respectively.  Either  of  these  five  defences 
may  also  be  made  under  a  special  plea,  instead  of  under 
the  general  issue  accompanied  by  notice,  if  the  defendant 
so  determines.42  But  if  any  defendant  uses  both  these 
forms  of  pleading  for  any  one  defence,  the  court  will, 
on  motion,  call  upon  him  to  select  the  one  which  he 
prefers,  and  to  abandon  the  other.43 

§  444.  Notices  of  special  matter  must  be  in  writing, 
and  must  be  served  on  the  plaintiff  or  his  attorney  at 

40  Stephen  on  Pleading,  158.  Peters,   218,   1832;   Day  v.   Car- 

41  Revised  Statutes,  Section  Spring  Co.,  3  Blatch.  181,  1854; 
•1920,  as  amended  in  29  Statutes  Henry  v.  United  States,  22  Court 
at  Large,  p.  692,  Ch.  391,  Sec-  of  Claims,  78,  1887. 

tion  2.  «  Read  v.  Miller,  2  Bissell,  16, 

12  Evans  v.  Eaton,  3  Wheaton,      1867. 
454,  1818;  Grant  v.  Raymond,  6 


CHAP.    XVIII.]  ACTIONS   AT   LAW  531 

least  thirty  days  before  the  trial  of  the  case.44  No  such 
notice  requires  any  order  of  court  as  a  prerequisite  thereto ; 
and  depositions  taken  before  the  service  of  such  a  notice 
are  as  admissible  under  it  as  if  taken  afterward.45  It  is 
not  the  purpose  of  the  statute  to  oblige  the  defendant  to 
give  notice  of  anticipating  matter  before  taking  deposi- 
tions. Its  only  purpose  is  to  give  the  plaintiff  thirty  days 
before  the  trial,  in  which  to  secure  evidence  to  contra- 
dict the  testimony  of  the  defendant's  witnesses,  in  case 
the  latter  is  untrue.  Notices  of  special  matter  are  not 
required  to  be  filed  in  court;  and  if  filed  they  are  not  ex- 
aminable by  demurrers.  Their  sufficiency  is  decided  at 
the  time  of  trial,  by  admitting  or  excluding  evidence 
offered  thereunder.46 

Notices  of  want  of  novelty  must  state  the  names  of  the 
prior  patentees,  and  the  dates  of  their  patents,  where 
prior  patents  are  relied  upon;  and  where  prior  knowledge 
or  use  is  relied  upon,  such  a  notice  must  state  the  names 
and  residences  of  the  persons  alleged  to  have  had  the  prior 
knowledge  of  the  thing  patented,  and  where  and  by  whom 
it  was  used.47  Where  prior  printed  publications  are  relied 
upon  as  negativing  the  novelty  of  the  patented  invention, 
the  statute  does  not  say  how  such  publications  are  to  be 
identified  in  such  notices.  But  the  Supreme  Court  has 
decided  that  they  must  be  pointed  out  with  sufficient 
definiteness  to  relieve  the  plaintiff  from  making  an  un- 
necessarily laborious  search  therefor.48  In  the  Supreme 
Court  case  just  cited,  a  notice  was  held  to  be  insufficient, 
winch  stated  that  the  patented  thing  was  described  in  a 

44  Revised     Statutes,     Section  47  Revised     Statutes,     Section 

4920,  as  amended  29  Stat.  692.  4920,  as  amended  29  Stat.  692. 

45Teese     v.     Huntingdon,     23  48  Silsby  v.  Foote,  14  Howard, 

Howard,  2,  1859.  218,  1852;  also,  Corrugated  Metal 

46  Henry  v.   United  States,   22  Co.   v.  Pattison,   197  F.  R.  577, 

Court  of  Claims,  79,  1887.  1912. 


532  ACTIONS    AT    LAW  [CHAP.    Will. 

certain  book  therein  mentioned,  l>ut  <li<l  not  state  in  what 
pari  of  that  book  it  was  s<>  described.  Notices  of  prior 
knowledge  or  use  are  sufficiently  specific,  when  they 
specify  the  city  in  which  thai  knowledge  or  use  existed 

or  occurred,  and  give  the  names  of  persons  who  had 
thai  knowledge,  or  who  engaged  in  that  use,  and  state 
in  what  city  those  persons  reside.49  That  is  to  say:  the 
word  "where"  and  the  word  "residence,"  as  those  words 
are  used  in  the  statute,  refer  to  cities,  villages,  or  towns, 
as  the  case  may  be,  and  do  not  refer  to  particular  houses, 
factories,  or  farms.  In  short,  the  answer  must  locate  the 
time  and  place  of  such  use  with  such  directness  and  cer- 
tainty as  will  enable  complainant  to  go  upon  the  ground 
and  determine  what  acts  are  relied  upon  by  the  defend- 
ant to  constitute  prior  use.50 

The  names  of  witnesses  as  such,  need  not  be  mentioned 
in  a  notice,  yet  it  is  often  necessary  to  use  as  witnesses, 
persons  who  are  named  in  the  notice  as  having  been  en- 
gaged in  the  prior  use  to  be  proved,  or  as  having  known  of 
the  anticipating  process  or  thing.  Accordingly  where  a 
notice  alleges  that  A.  B.  used  an  anticipating  machine  in  a 
certain  city,  and  that  CD.  had  knowledge  of  that  prior 
use,  those  facts  may  both  be  proved  by  E.  F.  without 
mentioning  his  name  in  the  notice.51  But  if  A.  B.  is  the 
only  available  person  by  whom  to  prove  his  prior  use,  or 
if  his  testimony  on  that  point  is  to  be  taken  together 
with  that  of  others,  his  name  must  still  be  mentioned  in 
the  notice:  mentioned  not  as  a  witness  to  be  called  to 
prove  a  fact,  but  as  the  person  who  transacted  that  fact. 

Notices  need  not  state  the  particular  tune  when  an 

49  Wise  v.  Allis,  9  Wallace,  737,  51  Planing-Machine       Co.       v. 

1869.  Keith,    101    U.    S.    492,    1879; 

30  Corrugated     Metal     Co.     v.  Many  v.  Jagger,   1  Blatch.  376, 

Pattison,  197  F.  R.  577,  1912.  1848. 


CHAP.    XVIII.]  ACTIONS   AT    LAW  533 

anticipating  printed  publication  was  published,  nor  when 
an  anticipating  process  or  thing  was  known  or  used;  52 
but  they  must  state  the  dates  of  all  alleged  anticipating 
patents.53  If  a  notice  does  unnecessarily  state  a  partic- 
ular time,  that  statement  will  be  regarded  as  harmless 
surplusage,  and  a  variance  therefrom  in  the  evidence 
will  not  render  the  latter  inadmissible.54 

§  445.  Where  any  defence  to  a  patent  action  can  be 
based  upon  a  fact  of  which  the  court  will  take  judicial 
notice  without  evidence,  that  defence  may  be  made 
under  the  general  issue  without  any  special  pleading.55 

§  446.  The  first  and  second  defences  are  those  which 
come  within  the  rule  of  the  last  section  relevant  to  judicial 
notice.  The  first  defence  is  applicable  mainly  or  only 
when  a  " principle"  has  been  patented,  as  for  example 
by  the  eighth  claim  of  Morse,56  or  by  the  anaesthesia  patent 
of  Morton  and  Jackson.57  The  applicability  of  judicial 
notice  to  that  defence  is  perhaps  invariable. 

But  there  appears  to  be  no  warrant  for  saying  that  the 
second  defence  need  not  be  pleaded,  where  a  patent  is 
assailed  for  want  of  invention,  on  account  of  prior  facts 
which  must  be  proved  by  evidence,  in  order  to  be  acted 
upon  by  courts.58  Justice  requires  that  the  plaintiff  be 
notified  beforehand  of  such  a  defence,  as  truly  as  of  the 
defence  of  want  of  novelty;  for  it  may  equally  be  based 
on  facts  outside  of  the  patent,  and  outside  of  the  knowl- 
edge of  the  inventor  and  of  the  plaintiff. 

52  Phillips  v.  Page,  24  Howard,  M  O'Reilly  v.  Morse,  15  How- 
164,  1860.  ard,  112,  1853. 

53  Revised  Statutes,  Section  57  Morton  v.  Infirmary,  5 
4920.  Blatch.  116,  1862. 

54  Phillips  v.  Page,  24  Howard,  58  Brickill  v.  Hartford,  57  F.  R. 
164,  1860.  217,  1893;  Britton  v.  White  Mfg. 

55  May  v.  Juneau  County,  137  Co.,  61  F.  R.  95,  1894. 
U.  S.  408,  1890. 


534  \<  noNS   \  i'  law  |<  n  \r.  xviii. 

§447.  The  third  defence  may  be  based  upon  a  special 
plea,  instead  of  on  the  general  issue  accompanied  by 
notice;  and  when  thai  practice  is  adopted,  thai  plea  is 
the  only  not  ice  which  the  plaint  iff  can  claim. :'9  It  has  been 
held  that  special  pleas,  when  used  instead  of  notices, 
must  be  filed  al  least  thirty  days  before  the  term  of  trial, 
or  the  plaintiff  will  be  entitled  to  a  continuance.60  This 
holding  was  so  reasonable  that  it  can  be  supported  on  the 
ground  that  every  court  has  power  to  make  reasonable 
rules  to  regulate  the  time  of  filing  pleas.61  A  special  plea 
which  has  been  stricken  out  by  order  of  court,  cannot 
operate  as  a  notice,  and  thus  furnish  the  foundation  of  a 
defence  which  requires  a  notice  in  the  absence  of  a  special 
plea.62  And  a  plea  or  notice  of  want  of  novelty  must  state 
that  the  anticipating  fact  occurred  before  the  invention 
claimed  by  the  patent  was  made;  for  it  is  not  enough  to 
state  that  the  anticipating  fact  occurred  before  the  date 
of  the  patent.63 

§  448.  The  fourth  defence  is  not  among  those  which 
can  be  made  under  the  general  issue  accompanied  by 
notice.  There  is  probably  no  case  in  which  it  has  been 
successfully  made  at  law,  without  being  set  up  in  a  special 
plea.  In  the  absence  of  such  precedents,  it  would  be  un- 
safe for  a  pleader  to  attempt  such  an  innovation  on  the 
rules  of  the  common  law. 

§  449.  The  fifth  and  sixth  defences  always  require  evi- 
dence outside  of  the  patent,  and  outside  of  the  doctrines 
of  judicial  notice.  They  may  be  made  under  the  general 
issue  accompanied  by  the  statutory  notice,64  or  under  a 

s9  Evans  v.  Eaton,  3  Wheaton,         «2  Foote  v.  Silsby,  1  Blatch.  445, 

504,  1818.  1849. 

r>"Phillips  v.  Comstock,  4  Mc-         "3  Brickill  v.  Hartford,  57  F.  R. 

Lean,  525,  1849.  219,  1893. 

81  Packet  Co.  v.  Sickles,  19  Wal-  64  Revised     Statutes,     Section 

lace,  611,  1873.  4920,  as  amended  29  Stat.  092. 


CHAP.    XVIII.]  ACTION'S    AT    LAW  535 

special  plea,  but  there  is  no  reason  to  suppose  that  they  can 
lawfully  be  made  under  the  general  issue  alone. 

§  450.  The  seventh  defence  is  not  based  on  any  express 
statute.  Its  foundation  is  the  general  spirit  of  the  patent 
laws;  and  it  has  been  expounded  in  a  number  of  cases, 
beginning  in  the  case  of  Railway  Co.  v.  Sayles.65  Evidence 
to  support  it  must  always  be  drawn  from  outside  of  the 
patent,  and  must  be  regularly  introduced  into  the  case. 
This  defence  is  therefore  to  be  made  by  a  special  plea, 
when  it  is  made  at  all. 

§  451.  The  eighth  defence*  may  be  made  either  by  the 
general  issue  accompanied  by  notice,66  or  by  special  plea. 
It  applies  to  cases  where  another  than  the  patentee  pre- 
ceded him  in  the  first  conception  of  the  patented  thing, 
but  did  not  precede  him  in  adapting  it  to  actual  use.  If 
that  other  stopped  with  that  conception,  the  validity  of  the 
patent  is  not  affected  thereby,  but  if  he  used  reasonable 
diligence  in  adapting  and  perfecting  the  invention  so 
conceived,  no  subsequent  inventor  can  have  a  valid  pat- 
ent, surreptitiously  or  unjustly  obtained  by  him  for  the 
same  invention.  Such  a  patent  is  surreptitiously  obtained, 
where  the  patentee  appropriates  the  idea  from  the  first 
conceiver,  and,  exceeding  him  in  speed,  reduces  the  in- 
vention to  proper  form,  and  secures  the  patent,  while 
the  first  conceiver  is  diligently  laboring  to  adapt  the  in- 
vention to  use.  Such  a  patent  is  unjustly  obtained,  if 
it  is  issued  to  a  subsequent  inventor,  when  the  first  con- 

65  Railway    Co.    v.    Sayles,    97  San    Francisco    Bridge    Co.,    69 

U.    S.    563,    1878;    Consolidated  F.  R.  644,  1895;  Erie  Rubber  Co. 

Electric  Light  Co.  v.  McKeesport  v.  American  Dunlop  Tire  Co.,  70 

Light  Co.,   40  F.   R.   26,    1889;  F.  R.  62,  1895;  Hulett  v.  Long, 

Beach  v.  Box  Machine  Co.,  63  15  App.  D.  C.  291,  1899. 
F.  R.  604,  1894;  Michigan  Cen-          M  Revised     Statutes,     Section 

tral  Railroad  Co.  v.  Car-Heating  4920,     as     amended     29     Stat. 

Co.,  67  F.  R.  126,  1895;  Bowers  v.  692. 


536  ACTIONS    AT    LAW  [('HAP.    Will, 

ceiver  is  using  due  diligence  to  reduce  his  invention  to 
practice.61  Where  this  defence  is  pleaded, all  its  elements 
must  be  incorporated  in  the  plea.  The  allegation  of  un- 
just or  surreptitious  obtaining  of  the  patent,  must  be 
accompanied  by  an  allegation  thai  the  first  conceiver 
was  at  the  time  using  reasonable  diligence  in  adapting 
and  perfecting  the  invention. M 

§452.  The  ninth  and  tenth  defences  are  based  on  the 
fact  that  patents  can  lawfully  be  granted  to  no  one  but  the 
inventors  of  the  things  covered  thereby,  or  to  those  who 
represent  them  as  assigns  or  legal  representatives.69 
Neither  of  those  defences  can  ever  receive  any  support 
from  the  face  of  the  patent,  or  from  any  fact  of  which  any 
court  can  take  judicial  notice.  Both  depend  upon  evidence 
aliunde,  and  either  must  be  interposed  in  a  special  plea, 
for  the  statute  does  not  include  either  among  those  de- 
fences which  may  be  made  under  the  general  issue  accom- 
panied by  notice.70 

§  453.  The  eleventh  defence  may  be  set  up  under  the 
general  issue  accompanied  by  notice,71  or  in  a  special  plea; 
and  in  either  way,  this  defence  must  be  stated  with  partic- 
ularity.72 Even  where  a  patent  does  contain  too  much 
or  too  little,  this  defence  does  not  apply,  unless  the  fault 
was  intended,  and  was  intended  to  deceive  the  public.73 
But  those  intentions  will  be  implied  from  proof  of  the 

157  Yates  v.  Huson,  8  App.  D.  C.  72  American  Sulphite  Pulp  Co. 

93,  1896.  v.   Howland  Falls  Pulp  Co.,   70 

68  Agawam  Co.  v.  Jordan,  7  Wal-  F.  R.  992,  1895. 

lace,  583,  1868.  73  Hotchkiss  v.  Oliver,  5  Denio 

89  Sections  50  and   51   of   this  (N.  Y.),  314,  1848;  Celluloid  Mfg. 

book.  Co.  v.  Russell,  37  F.  R.  679,  1889; 

70  Butler  v.  Bainbridge,  29  F.  R.  Burke  Electric  Co.  v.  Independent 
143,  1886.  Pneumatic  Tool  Co.,  232  F.  R. 

71  Revised     Statutes,     Section  145,  1916. 
4920.  as  amended  29  Stat.  692. 


CHAP.    XVIII.]  ACTION'S    AT    LAW  537 

fact  that  the  inventor  knew  the  true  importance  of  what 
he  wrongly  omitted  from  his  specification,  or  wrongly 
inserted   therein.74 

§  454.  The  twelfth  defence  is  somewhat  similar  to  the 
first  member  of  the  eleventh;  but  unlike  that,  it  cannot 
be  based  on  the  general  issue  accompanied  by  notice; 
and  it  does  not  require  the  element  of  intention  to  deceive. 
It  is  based  upon  that  provision  of  the  statute  which  makes 
a  full  clear,  concise,  and  exact  description  of  the  invention 
a  prerequisite  to  the  jurisdiction  of  the  Commissioner  to 
grant  a  patent.75  If  a  patent  falls  below  the  statutory  re- 
quirement in  that  respect,  that  patent  is  void.76  Whether 
a  given  patent  does  so  fall  is  a  question  of  evidence  and 
not  of  construction.77  Therefore  this  defence  cannot  be 
made  by  demurrer.78  This  defence  must  be  interposed  in  a 
special  plea;  for  neither  the  statute  nor  any  precedent 
contemplates  its  being  based  on  the  general  issue,  either 
with  or  without  notice;  and  still  less  does  any  rule  of  law 
provide  for  its  being  made  on  the  trial  of  an  action  without 
being  pleaded  at  all. 

§  455.  The  thirteenth  defence  is  based  on  the  statute 
which  requires  that,  before  any  inventor  shall  receive  a 
patent  for  his  invention,  he  shall  particularly  point  out, 
and  distinctly  claim,  the  part,  improvement  or  combina- 
tion which  he  claims  as  his  invention.79  It  is  a  defence  of 
decided  merit,  aimed  by  the  policy  of  the  law  at  nebulous 

74  Electric  Boot  &  Shoe  Finish-  tilizer  Co.  v.  Swift  &  Co.,  100 
ing  Co.  v.  Little,  75  F.  R,  276,      F.  R.  451,  1900. 

1S96.  "Loom    Co.    v.    Higgins,    105 

75  Revised     Statutes,     Section      U.  S.  580,  1881. 

4888.  78  Chase  v.  Fillebrown,  58  F.  R. 

76  O'Reilly  v.  Morse,  15  Howard,      376,  1893. 

62,  1853;  Pacific  Cable  Ry.  Co.  v.  79  Revised     Statutes,      Section 

Butte  City  Ry.  Co.,  58  F.  R.  422,      4888. 
1893;  National  Chemical  &  Fer- 


538  ACTIONS    AT    LAW  [CHAP.     Will. 

claims.  The  courts  have  no1  heretofore  gone  so  far  in 
upholding  this  defence  as  the  statute  would  justify. 
Probably  the  strongest  judicial  language  heretofore  used 
on  the  subject  is  that  of  the  Supreme  Court  in  the  case  of 
Carlton  v.  Bokee.80  In  that  case  Justice  Bradley,  in 
delivering  the  opinion,  said  that:  "Where  a  specification, 
by  ambiguity  and  a  needless  multiplication  of  nebulous 
claims,  is  calculated  to  deceive  and  mislead  the  public, 
the  patent  is  void."  This  defence  may  be  made  by  de- 
murrer; 81  because  the  question  of  the  validity  of  a  patent, 
as  against  it,  is  a  question  of  construction  of  the  docu- 
ment, to  decide  which,  a  judge  will  seldom  require  aid 
from  other  evidence  than  the  letters  patent  themselves. 
But  a  special  plea  is  probably  the  best  means  of  interpos- 
ing this  defence;  though  there  is  less  meritorious  necessity 
for  special  pleading  to  support  it,  than  there  is  to  sup- 
port any  other  defence  which  assails  the  validity  of  a 
patent. 

§  456.  The  fourteenth  defence  is  based  upon  the  statute 
which  provides  that  where  a  new  invention  and  an  old 
one  are  both  claimed  in  a  patent,  the  patentee  may  sus- 
tain an  action  on  the  former,  but  not  unless  he  disclaims 
the  latter  without  unreasonable  delay.82  That  the  old 
invention  was  old,  and  that  the  delay  to  disclaim  it  was 
unreasonable,  are  matters  of  fact  depending  upon  evi- 
dence. There  is  therefore  no  reason  to  suppose  that  this 
defence  can  be  made  in  any  action  at  law,  without  a  spe- 
cial plea  to  give  it  entrance. 

§  457.  The  fifteenth  defence  goes  to  the  jurisdiction  of 
the  Commissioner  to  reissue  the  patent  in  suit.     In  the 

80  Carlton  v.  Bokee,  17  Wallace,  82  Revised  Statutes,  Section 
472,  1873.                                            4922. 

81  Brickill  v.  Hartford,  49  F.  R. 
373,  1892. 


CHAP.    XVIII.]  ACTIONS    AT    LAW  539 

chapter  on  reissues  the  defence  is  discussed  with  some  ful- 
ness.83 Whatever  doubt  may  exist  relevant  to  its  scope,  it 
is  clear  that  the  questions  which  are  involved  in  its  appli- 
cability to  a  particular  case,  are  mainly  questions  of  fact, 
depending  upon  evidence  in  pais,  and  that  a  special  plea 
is  therefore  the  proper  means  of  bringing  it  to  the  atten- 
tion of  the  court. 

§  458.  The  sixteenth  defence  originated  in  the  year 
1S82,84  and  though  not  based  on  the  letter  of  any  statute, 
it  has  been  many  times  enforced.  The  first  element  in 
its  foundation  is  a  point  of  comparative  construction  of  the 
original  and  the  reissue  patent.  But  inasmuch  as  a  plain- 
tiff, suing  on  a  reissue,  need  not  introduce  the  original 
in  evidence,  even  that  element  depends  upon  proof  by 
the  defendant  of  the  contents  of  the  original.  The  second 
element  is  a  variable  quantity,  for  the  particular  length 
of  time  between  the  date  of  an  original  and  the  applica- 
tion for  a  reissue  patent,  which  will  be  fatal  to  a  broadened 
reissue,  depends  upon  the  circumstances  of  each  case, 
and  those  circumstances  can  be  made  known  to  the 
court  through  evidence  alone.  These  considerations 
point  to  the  propriety  of  disregarding  this  defence,  in  an 
action  at  law,  unless  it  is  set  up  in  a  special  plea,  and 
the  plaintiff  thus  notified  of  what  he  must  meet  on  the 
trial. 

§  459.  The  seventeenth  defence  depends  upon  proof  of 
the  original  patent,  and  requires  at  least  that  amount  of 
evidence  to  support  it.  In  cases  where  the  question  of 
sameness  or  difference  of  invention  is  a  complicated  one, 
courts  may  require  the  benefit  of  evidence  on  that  subject 
to  aid  them  in  deciding  the  point.  In  order  to  give  both 
sides  an  opportunity  to  produce  such  evidence,  a  special 

83  Section  221  of  this  book.  84  Miller  v.  Brass  Co.,  104  U.  S. 

350,  1882. 


")40  ACTIONS    AT    LAW  [CHAP.    Will. 

plea  seems  necessary ;  l)ii(  it  has  been  decided  thai  a  gen- 
eral denial  of  the  declaration  is  enough.86 

§  460.  The  eighteenth  defence  can  be  made  by  a  de- 
murrer in  a  case  which  is  based  on  the  prior  patent,  as  well 
as  on  its  alleged  double; 8G  but  in  other  cases  it  requires  a 
special  plea,  because  it  is  a  defence  in  confession  and  avoid- 
ance of  the  declaration. 

§  401.  The  nineteenth  defence  will  of  course  require 
evidence  of  the  record  of  the  court  which  repealed  the 
patent.  But  as  that  record  cannot  be  contradicted  by 
any  evidence,  and  as  no  repeal  could  have  been  had  with- 
out the  knowledge  of  the  plaintiff  or  his  privies,  then? 
seems  to  be  no  meritorious  reason  why  a  special  plea  should 
be  insisted  upon  to  sustain  this  defence.  But  in  the  ab- 
sence of  a  precedent,  that  will  be  the  safest  pleading  for 
the  defendant  to  file. 

§  462.  The  twentieth  defence  demands  a  special  plea, 
where  it  is  based  on  the  expiration  of  a  foreign  patent  on 
the  same  invention  as  that  of  the  patent  in  suit;  because 
the  evidence  to  prove  the  existence  and  the  expiration  of 
the  foreign  patent,  must  come  from  outside  the  patent 
in  suit,  and  must  generally  be  supported  by  expert  testi- 
mony that  the  foreign  patent  produced  is  really  one  for 
the  same  invention  as  the  patent  in  suit.  Indeed,  the 
defence  may  fail  even  then,  for  it  cannot  stand  against 
proof  that  the  foreign  patent  was  surreptitiously  taken 
out  by  another  than  the  United  States  patentee,  and 
without  his  knowledge  or  consent.  It  would  be  unjust 
to  allow  a  plaintiff  to  be  surprised  on  the  trial  of  an  action 
at  law,  with  proof  of  a  foreign  patent  for  his  invention 
granted  to  another,  after  his  invention  was  made,  but 
before  the  date  of  his  patent.    Such  a  piece  of  evidence, 

85  Oregon  Imp.  Co.  v.  Excelsior  8B  Russell  v.  Kern,  64  F.  R.  581, 
Coal  Co.,  132  U.  S.  215,  1889.  1894. 


CHAP.    XVIII.]  ACTIONS    AT    LAW  541 

if  unexplained,  might  limit  the  duration  of  the  United 
States  patent,  and  thus  perhaps  defeat  the  suit.  It  is 
clear,  therefore,  that  no  such  issue  ought  to  be  sprung 
upon  a  plaintiff  when  before  the  court.  A  special  plea 
is  requisite  to  give  him  notice  of  a  fact  apparently  so 
unfavorable. 

§  463.  The  twenty-first  defence  can  be  made  under  the 
general  issue,  for  it  must  be  negatived  in  the  declaration.87 

§  464.  The  twenty-second  defence  can  be  made  under 
the  general  issue,  where  the  defendant  merely  proposes 
to  argue  that  the  plaintiff's  evidence  does  not  make  out 
any  title,  or  makes  out  no  such  title  as  enables  him  to  sue 
in  an  action  at  law.  But  where  the  defendant  attacks  the 
plaintiff's  title  on  the  basis  of  a  paramount  assignment 
to  another,  he  ought  to  plead  the  defence  specially, 
for  otherwise  the  plaintiff  might  be  surprised  on  the 
trial  with  evidence  which,  with  a  little  time  for  prep- 
aration, he  could  perhaps  explain  away,  or  perhaps 
overthrow. 

§  465.  The  twenty-third  and  twenty-fourth  defences 
both  required  to  be  pleaded  specially  according  to  the 
pleading  rules  of  the  ancient  common  law.88  But  under 
the  relaxation  which  obtained  in  England,  in  the  eight- 
eenth century,  they  could,  in  ordinary  cases,  have  been 
proved  under  the  general  issue.89  That  relaxation  does 
not,  however,  deserve  to  be  extended  by  any  process  of 
reasoning  by  analogy;  and  it  is  possible  that  the  courts 
will  hold  that  it  does  not  apply  to  patent  litigation  in  the 
United  States. 

§  466.  The  twenty-fifth  defence  is  one  to  which  the 
plea  of  the  general  issue  is,  and  always  was,  appropriate, 
for  it  is  a  defence  which  consists  simply  in  a  denial  of  the 

87  Dunkp  v.  Schofield,  152  U.  S.  8S  Stephen  on  Pleading,  158. 

244,  1894.  89 1  Chitty  on  Pleading,  491. 


5  I'-  \<  TIONS    A.T    LAW  [CHAP.    W  III. 

alleged  infringement.90  And  even  where  a  proper  defence 
of  non-infringement  involves  evidence  of  the  Btate  of  the 
art,  the  general  issue  is  a  sufficient  plea  under  which  to 
make  such  a  defence,  because  do  notice  t<>  the  plaintiff 
is  necessary  to  render  such  evidence  admissible.91 

$  407.  The  twenty-sixth  defence  is  as  proper  in  an  ac- 
tion at  law  as  it  is  in  an  action  in  equity.92  Estoppels 
in  patent  cases  are  like  those  in  other  cases,  in  that  they 
are  divisible  into  three  classes:  Estoppels  by  matter  of 
record;  by  matter  of  deed;  and  by  matter  in  pais.  The 
principles  of  estoppel  constitute  a  systematic  department 
of  the  law,  to  the  delineation  and  development  of  which  a 
number  of  text-writers  have  devoted  careful  and  thorough 
consideration.  No  extensive  discussion  of  the  subject 
is  therefore  to  be  expected  in  this  book.  Something  has 
already  been  written  about  estoppel  in  pais,  in  connection 
with  the  subject  of  implied  licenses.95  And  it  may  be 
mentioned  here,  that  a  defendant  is  not  estopped  from 
denying  the  validity  of  a  patent,  by  the  fact  that  he 
formerly  thought  and  represented  it  to  be  valid,94  or  the 
fact  that  he  once  made  an  application  himself,  for  a  patent 
on  the  same  invention.95  And  something  more  may  be 
added  in  this  place,  about  estoppels  by  matter  of  record, 
and  by  matter  of  deed,  for  the  patent  precedents  contain 
a  few  cases  in  which  those  doctrines  have  been  applied  to 

""  Stephen  on  Pleading,  160.  92  Dickerson   v.    Colgrove,    100 

"Dunbar  v.  Myers,  94  U.  S.  U.   S.   584,    1S79;   City  of  Con- 

198,    1876;   Eachus  v.   Broomall,  cord   v.   Norton,    16   F.  R.  477, 

115  U.  S.  434,  1885;  Grier  v.  Wilt,  1883. 

120  U.    S.   429,    1886;   Jones    v.  93  Section  313  of  this  book. 

Cyphers,    126  F.   R.   753,    1903;  "  De  La  Vergne  Machine  Co. 

Morton  v.  Llewellyn,   164  F.  R.  v.  Featherstone,    49   F.    R.   919, 

693,    1908;    Stevens    v.    Rodgers  1892. 

Boiler  &  Burner  Co.,  186  F.  R.  95  Page   v.   Buckley,   67   F.    R. 

631,  1911.  142,  1895. 


CHAP.    XVIII.]  ACTIONS    AT    LAW  543 

controversies  touching  letters  patent  for  inventions.  But 
the  investigator  will  often  need  to  resort  to  the  standard 
text-books  on  estoppel,  when  .seeking  for  the  law  appli- 
cable to  such  matters,  as  they  may  hereafter  arise  in  patent 
litigation;  for  the  instances  in  which  the  doctrines  of 
estoppel  have  heretofore  been  applied  to  patent  cases  are 
comparatively  few.  Those  doctrines  may,  however,  be 
deduced  from  other  kinds  of  causes,  and  then  applied  in 
patent  litigation  with  all  their  inherent  forces.96 

§  468.  Estoppel  by  matter  of  record  arises  out  of  the 
doctrine  of  res  judicata;  and  indeed  that  sort  of  estoppel 
generally  and  properly  passes  under  the  name  of  that 
doctrine.  It  is  a  requirement  of  public  policy  and  of 
private  peace,  that  each  particular  litigation  shall  duly 
come  to  an  end,  and  that  when  once  ended,  it  shall  not  be 
revived.  The  law  therefore  properly  requires  that  things 
adjudicated  shall  not  again  be  drawn  in  question  between 
the  same  parties,  or  between  any  persons  whose  con- 
nection with  the  adjudication  is  such  that  it  ought  to 
bind  them  all.97  But  a  person  cannot  invoke  an  adjudica- 
tion, on  the  ground  that  he  contributed  money  to  or  other- 
wise assisted  in  the  litigation  which  produced  it,  unless  that 
fact  was  known,  at  the  time  it  occurred,  to  the  party 
against  whom  the  adjudication  is  sought  to  be  invoked.98 

96  Duboise  v.  Railroad  Co.,  5  99  F.  R.  287,  1899;  Hanks  Dental 
Fisher,  208,  1871.  Ass'n     v.     International      Tooth 

97  Hubbell  v.  United  States,  171  Crown  Co.,  122  F.  R.  74,  1903; 
U.  S.  209,  1898;  Bradley  Mfg.  Penfield  v.  Potts  &  Co.,  126  F.  R. 
Co.  v.  Eagle  Mfg.  Co.,  57  F.  R.  475,  1903;  Sacks  v.  Kufferle,  127 
985,  1893;  Westinghouse  Electric  F.  R,  569,  1904;  Westinghouse 
&  Mfg.  Co.  v.  Stanley  Elec-  Electric  &  Mfg.  Co.  v.  Jefferson, 
trie  Mfg.  Co.,  117  F.  R.  309,  etc.,  Co.,  128  F.  R.  751,  1904; 
1902.  Jefferson    Electric,   etc.,    Co.    v. 

98  Cramer  v.  Singer  Mfg.  Co.,  Westinghouse  Electric,  etc.,  Co., 
93  F.  R.  636,  1899;  Lane  v.  Welds,  139  F.  R.  385,  1905;  Foote  v.  Par- 


544  ACTIONS     \T    LAW  [CHAP.    Will. 

This  rule  is  based  <>n  the  doctrine  of  mutuality  of  estoppel. 
\'<>r  can  a  user  invoke  the  doctrine  when  sued  for  infringe- 
ment, even  though  the  article  has  been  held  to  be  an  in- 
fringement in  ;t  suit  by  the  same  complainant  against  the 
manufacturer  who  supplied  the  article  to  the  user."  What 
circumstances  will  cause  a  third  party  assisting  in  a  defence 
to  be  bound  by  a  decree  cannot  be  definitely  stated.  It 
has  been  held  that  mere  payment  of  costs  does  not  cause 
a  manufacturer  to  be  bound  by  a  decree  against  a  dealer 
where  it  does  not  appear  that  the  attorney  for  the  de- 
fendant was  not  under  the  exclusive  control  of  the  dealer.100 

Interlocutory  decrees  furnish  no  foundation  for  a  plea 
of  res  judicata.101  And  it  is  only  in  respect  of  questions 
actually  litigated  and  decided  in  a  prior  case,  that  the 
judgment  is  conclusive  in  another  action.102 

A  final  decree  is  pleadable,  in  a  subsequent  action,  not- 
withstanding the  defendant  may  have  new  defences  to 
interpose:  defences,  which  he  did  not  deem  it  necessary 
to  make  to  the  former  suit,  or  did  not  learn  of  in  time  to 
set  them  up  in  the  former  litigation.103  And  final  decrees 
or  judgments  are  not  only  binding  on  the  parties  to  the 

sons  Non-Skid  Co.,  196  F.  R.  951,  Stromberg  Motor  Devices  Co.  v. 

1912.  Zenith  Carburetor  Co.,  220  F.  R. 

*•  Eldred    v.    Breitwieser,    132  154,  1915. 

F.  R.  251,  1904.  102  Bruise  v.  Peck,  54  F.  R.  822, 

«»  General     Electric     Co.     v.  1893;  Mack  v.  Levy,  60  F.  R.  751, 

Morgan-Gardner  Electro  Co.,  168  1894;  Norton  v.  Jansen,  81  F.  R. 

F.  R.  52,  1908.  505,  1897. 

101  Rumford  Chemical  Works  v.  103  Duboise  v.  Railroad  Co.,  5 

Hecker,  2  Bann.  &  Ard.  359, 1876;  Fisher,    210,     1871;    Gloucester 

Roemer  v.  Neumann,  26  F.  R.  Isinglass  Co.  v.  LePage,  30  F.  R. 

332,   1886;  Morss  v.  Knapp,  37  371,  1887;  Bradley  Mfg.  Co.  v. 

F.    R.    353,    1889;    Harmon    v.  Eagle  Mfg.  Co.,  57  F.  R.  989, 

Struthers,  48  F.  R.  260,   1891;  1893;  Mack  v.  Levy,  60  F.  R. 

Brush   Electric  Co.    v.    Western  752,  1894. 
Electric  Co.,  76  F.  R.  764,  1896; 


CHAP.    XVIII.]  ACTIONS    AT    LAW  545 

actions  from  which  they  resulted,  but  they  are  also  con- 
clusive against  or  for  all  persons  who  purchase  interests 
in  the  subject-matter  of  litigation  after  such  decrees  or 
judgments  are  entered;  101  or  even  before  such  entry, 
if  after  the  beginning  of  the  action  which  resulted  in  those 
judgments  or  decrees; 105  and  also  against  or  for  persons 
who  openly  assumed  the  control  and  expense  of  the  former 
litigation,  even  though  not  parties  thereto.106  So,  also, 
judgments  by  default,  decrees  pro  confesso,  and  consent 
decrees  are  pleadable  as  res  judicata,  if  they  are  final  in 
their  nature,  with  the  same  effect  as  are  judgments  or  de- 
crees which  were  rendered  after  long-contested  litiga- 
tions.107 But  final  consent  decrees  are  not  pleadable 
against  those  who  merely  assume  defence  of  the  suit 
without  becoming  parties  on  the  record,  where  the 
decree  was  entered  without  the  consent  of  such  par- 
ties.108 

But  in  order  to  be  binding  on  either  party  to  a  new  ac- 
tion, a  former  judgment  or  decree  must  be  binding  on 

104  Consolidated  Fruit  Jar  Co.  Co.  v.  Eagle  Mfg.  Co.,  57  F.  R. 
v.  Whitney,  2  Bann.  &  Ard.  33,  985,  1893;  National  Folding-Box 
1875;  Pennington  v.  Hunt,  20  Co.  v.  Dayton  Paper  Novelty  Co., 
F.  R.  195,  1884;  Norton  v.  San  95  F.  R.  991,  1899;  D'Arcy  v. 
Jose  Fruit-Packing  Co.,  79  F.  R.  Staples  &  Hanford  Co.,  161  F.  R, 
793,  1897;  Newton  Mfg.  Co.  v.  733,  1908;  Gilchrist  Co.  v.  Erie 
Wilgus,  90  F.  R.  484,  1898.  Specialty  Co.,  231  F.  R.  659, 1916. 

105  Carroll  v.  Goldschmidt,  83  107  Bradford  v.  Bradford,  5  Con- 
F.  R.  509,  1897.  necticut,  131,  1823;  Davis  v.  Mur- 

•«  United  States  Felting  Co.  v.  phy,  2  Rich.  (S.  C.)  560,  1846; 

Asbestos  Felting  Co.,  4  F.  R.  816,  United    States    Packing    Co.    v. 

1880;  American  Bell  Telephone  Tripp,  31  F.  R.  350,  1887:  Carroll 

Co.  v.  National  Telephone  Co.,  27  v.   Goldschmidt,  83   F.   R.   509, 

F.  R.  665,  1886;  Eagle  Mfg.  Co.  1897. 

v.  Miller,  41  F.  R.  357, 1890;  Eagle         108Stromberg    Motor    Devices 

Mfg.  Co.  v.  Bradley  Mfg.  Co.,  50  Co.  v.  Zenith  Carburetor  Co.,  220 

F.   R.   193,   1891;  Bradley  Mfg.  F.  R.  154,  1914. 


546  ACTIONS   AT   LAW  [chap.   Will. 

both.109  No  former  adjudication  is  pleadable  in  favor 
of  either  party  to  a  suit,  unless  it  would  have  been  pleada- 
ble against  him,  if  it  had  been  rendered  the  other  way.110 
But  a  decree  may  be  pleadable  against  a  complainant, 
only  on  a  single  point  in  a  subsequent  case,  though  it 
would  have  been  pleadable  against  the  defendant  on  all 
the  points  in  that  case,  if  it  had  been  rendered  the  other 
way;  because  to  be  rendered  the  other  way,  all  those 
points  would  have  to  be  decided  for  the  complainant, 
whereas  only  one  of  those  points  might  have  to  be  decided 
against  the  complainant,  in  order  to  necessitate  a  decree 
for  the  defendant.111  On  the  other  hand,  a  decree  may  be 
pleadable  for  the  complainant,  only  on  the  subject  of  the 
validity  of  his  patent,  and  not  upon  the  question  of  its 
infringement  by  the  defendant.112 

§  469.  Estoppel  by  matter  of  deed  may  also  arise  in 
patent  affairs.113  Where,  for  example,  the  alleged  infringer 
has  by  contract  admitted  the  validity  of  the  patent  and 
agreed  not  to  infringe  in  the  future,114  or  where  an  assignor 
or  grantor  of  a  patent  right,  afterward  infringes  the  right 
which  he  conveyed,  he  is  estopped  by  his  conveyance 
from  denying  the  plaintiff's  title,115  or  the  validity  of  the 
patent,  when  sued  for  its  infringement,116  even  where  the 

109  Mack  v.  Levy,  60  F.  R.  752,  113  On  the  question  of  such  an 
1894.  estoppel  in  favor  of  purchasers 

110  Ingersoll  v.  Jewett,  16  from  trustees  in  bankruptcy,  re- 
Blatch.  378,  1879;  Dale  v.  Rose-  ceivers  and  the  like,  see  Section 
velt,  1  Paige  (N.  Y.),  35,  1828;  290  of  this  book. 

Paynes  v.  Coles,  1  Munford  (Va.),  114  American  Specialty  Stamp- 

394, 1810;  Greene  v.  City  of  Lynn,  ing  Co.  v.  New  England  Enamel- 

55  F.  R.  522,  1893.  ling  Co.,  178  F.  R.  106,  1910. 

111  Steam  Gauge  &  Lantern  Co.  115  Woodward  v.  Lasting  Mach. 
v.  Meyrose,  27  F.  R.  213,  1886.  Co.,  60  F.  R.  284,  1894. 

112  Bradley  Mfg.  Co.  v.  Eagle  11B  Consolidated  Middlings 
Mfg.  Co.,  57  F.  R.  988,  1893.  Purifier  Co.  v.  Guilder,  9  F.  R. 


CHAP.    XVIII. J 


ACTIONS   AT   LAW 


547 


invalidity  is  due  to  an  unlawful  reissue  obtained  after  the 
assignment,117  and  even  though  the  assignee  at  the  time 
of  the  assignment  knew  of  the  defects  which  rendered  the 
patent  invalid,118  and  even  though  the  assignor  had  been 
induced  to  part  with  his  title  on  fraudulent  representation 
by  the  assignee.119  This  is  likewise  true  of  strangers  who 
are  co-operating  with  him  in  the  infringement; 120  and  also 
of  a  corporation  which  is  merely  an  incorporation  of  the 
assignor; 121  or  an  incorporation  of  the  assignor,  and 
strangers  in  collusion  with  him  even  though  some  of 
the  minor  stockholders  are  innocent;  m  and  also  of  one 
who,  although  he  had  no  interest  in  the  title  to  the 
patent  nevertheless  receives  for  his  own  benefit  a  portion 


156,  1881;  Adee  v.  Thomas,  41 
F.  R.  345,  1890;  Corbin  Lock  Co. 
v.  Yale  &  Towne  Mfg.  Co.,  58 
F.  R.  565,  1893;  Martin  &  Hill 
Cash  Carrier  Co.  v.  Martin,  67 
F.  R.  787,  1895;  National  Con- 
duit Co.  v.  Connecticut  Pipe 
Mfg.  Co.,  73  F.  R.  491,  1896; 
Daniel  v.  Miller,  81  F.  R.  1000, 
1897;  Griffith  v.  Shaw,  S9  F.  R. 
313,  1898;  Smith  v.  Ridgely,  103 
F.  R.  875,  1900;  Force  v.  Sawyer- 
Boss  Mfg.  Co.,  Ill  F.  R.  902, 
1901;  Consolidated  Rubber  Tire 
Co.  v.  Finley  Rubber  Tire  Co., 
116  F.  R.  629,  1902;  Continental 
Wire  Fence  Co.  v.  Pendergast, 
126  F.  R.  381,  1903;  Automatic 
Switch  Co.  n  Monitor  Mfg.  Co. 
(discussing  question  and  collating 
authorities  in  various  circuits), 
180  F.  R.  983,  1910. 

117  Burdsall  v.  Curran,  31  F.  R. 
919,  1887. 


"8Peele  Co.  v.  Raskin,  194 
F.  R.  440,  1912. 

119  Vacuum  Engineering  Co.  v. 
Dunn,  209  F.  R.  219,  1913. 

120  Continental  Wire  Fence  Co. 
v.  Pendergast,  126  F.  R.  381, 
1903;  Frank  v.  Bernard,  131  F.  R. 
269, 1904;  Climax  Lock  &  Ventila- 
tor Co.  v.  Ajax  Hardware  Mfg. 
Co.,  192  F.  R.  126,  1911;  Mel- 
lor  v.  CarroU,  141  F.  R.  992, 
1905. 

121  Siemens  Halske  Electric  Co. 
v.  Duncan  Electric  Mfg.  Co., 
142  F.  R.  157,  1905;  Matthews 
Gravity  Co.  v.  Lister,  154  F.  R. 
490,  1906;  Automatic  Switch  Co. 
v.  Monitor  Mfg.  Co.,  180  F.  R. 
983,  1910;  Onondago  Indian  Wig- 
wam Co.  v.  Ka-Noo-No  In- 
dian Mfg.  Co.,  182  F.  R.  832, 
1910. 

122  Mellor  v.  Carroll,  141  F.  R. 
992,  1905. 


548  ACTION'S    AT    LAW  [CHAP.     Will. 

of  the  proceeds  of  the  sale  of  the  patent.128  Bui  the  es- 
toppel doos  not  extend  to  a  stranger  merely  because  the 
patentee  or  a  previous  owner  is  in  the  employ  of  the 
former,124  unless  the  employment  was  for  the  purpose  of 
designing  a  device  which  would  avoid  infringement  — 
in  which  event  if  infringement  is  found  the  estoppel  ap- 
plies;126 nor  to  a  corporation  which  took  over  the  business 
in  good  faith  without  special  reference  to  the  patent.120 

Where  a  stranger  is  charged  with  the  estoppel  it  must 
be  a  case  of  actual  co-operation  between  him  and  the 
assignor,  since,  if  he  makes  the  infringing  article  merely 
on  the  order  of  the  assignor  he  is  not  estopped,  at  least 
as  to  more  than  the  particular  machine  which  he  made.127 
Nor  does  the  estoppel  extend  to  a  corporation  which 
employs  the  assignor  to  make  for  it  articles  under  an 
improvement  patent  of  the  assignor  even  though  the 
corporation  knew  of  the  assignment  of  the  original  patent 
and  even  though  the  corporation  is  utilizing  the  improve- 
ment patent  under  royalties.128  But  such  an  assignor 
or  grantor  is  not  estopped,  by  his  conveyance,  from  show- 
ing how  narrowly  the  patent  must  be  construed,129  except 

123  Johnson  Furnace  &  Eng.  128  Trussed  Concrete  Steel  Co. 
Co.  v.  Western  Furnace  Co.,  178  v.  Corrugated  Bar  Co.,  214  F.  R. 
F.  R.  819,  1910.  393,  1913. 

124  Babcock  &  Wilcox  Co.  v.  129  Babcock  v.  Clarkson,  63 
Toledo  Boiler  Works  Co.,  170  F.  R.  607,  1894;  Western  Tele- 
F.  R.  81,  1909.  phone  Construction  Co.  v.  Strom- 

125  Mergenthaler  Linotype  Co.  berg,  66  F.  R.  551,  1895;  Martin 
v.  International  Typesetting  Ma-  Cash  Carrier  Co.  v.  Martin,  67 
chine  Co.,  229  F.  R.  168,  1914.  F.  R.  787,  1895;  Missouri  Lamp 

126  Macey  Co.  v.  Globe-  &  Mfg.  Co.  v.  Stempel,  75  F.  R. 
Wernicke  Co.,  180  F.  R.  401,  583,  1896;  Noonan  v.  Chester 
1910.  Park  Athletic  Club  Co.,  99  F.  R. 

127  Roessing-Ernst  Co.  v.  Coal  90,  1900;  Alvin  Mfg.  Co.  v. 
&  Coke  By-Products  Co.,  208  Scharling,  100  F.  R.  87,  1900; 
F.  R.  990,  1913.  Smith  v.  Ridgely,  103  F.  R.  875, 


CHAP.    XVIII.] 


ACTIONS   AT   LAW 


549 


to  the  extent  to  which  he  may  have  made  representations 
as  to  the  scope  of  the  patent  as  an  inducement  to  the 
sale.130  He  may  not,  however,  introduce  evidence  os- 
tensibly for  that  purpose,  but  which  in  fact  tends  to  show 
that  the  patent  is  invalid.  13°  The  assignor  is  not,  however, 
estopped  from  testifying  in  derogation  of  the  patent  in 
a  suit  by  the  assignee  against  a  third  party.131 

§  470.  The  defence  of  estoppel  requires  a  special  plea 
to  introduce  it  into  a  litigation.  Thus,  for  example,  if  a 
former  judgment  or  decree  is  not  pleaded  as  an  estoppel 
by  a  defendant,  he  refers  the  merits  of  the  controversy 
anew  to  the  court.  The  former  adjudication  may  be  used 
as  an  argument,  but  it  cannot  be  relied  upon  as  a  bar, 
unless  it  is  set  up  in  a  special  plea.132 

§  471.  The  twenty-seventh  defence  may  be  made  by 
demurrer,133  but  if  not  so  interposed  it  must  always  be 

1900;  Hurwood  Mfg.  Co.  v.  Wood,  13°  Cross  Paper  Feeder  Co.  v. 

138  F.   R.   835,    1905;   National      United    Printing    Machine    Co., 


Recording  Safe  Co.  v.  Interna- 
tional Safe  Co.,  158  F.  R.  824, 
1908;  Johns-Pratt  Co.  v.  Sachs 
Co.,  175  F.  R.  70,  1909;  Leather 
Grille  &  Drapery  Co.  v.  Christo- 
pherson,  182  F.  R.  817,  1910; 
Rollman  Mfg.  Co.  v.  Universal 
Hardware  Works,  207  F.  R.  97, 
1913;  Standard  Plunger  Elevator 
Co.  v.  Stokes,  212  F.  R.  941, 1914; 
Crown  Cork  &  Seal  Co.  v.  Carper- 
Automatic,  etc.,  Co.,  229  F.  R. 
748,  1915;  Automatic  Switch  Co. 
v.  Monitor  Mfg.  Co.  (collating  au- 
thorities on  the  point  in  various 
circuits),  180  F.  R.  983,  1910; 
contra,  Siemens  Halske  Electric 
Co.  v.  Duncan  Electric  Mfg.  Co., 
142  F.  R.  157,  1905. 


220  F.  R.  313,  1915;  Automatic 
Switch  Co.  v.  Monitor  Mfg.  Co. 
(discussing  doctrine  of  estoppel 
in  this  connection),  180  F.  R.  983, 
1910;  United  Printing  Machine 
Co.  v.  Cross  Paper  Feeder  Co., 
227  F.  R.  600,  1915. 

131  DeLaval  Separator  Co.  v. 
Vermont  Farm  Mach.  Co.,  135 
F.  R.  772,  1904.  But  see  Siemens 
Halske  Co.  v.  Duncan,  142  F.  R. 
157,  1905. 

132 1  Chitty  on  Pleading, 
509. 

i"  Brickill  v.  Hartford,  49  F.  R. 
373,  1882. 

Contra,  Peters  v.  Hangar,  134 
F.  R.  586,  1904. 


560  ACTIONS   AT   LAW  [CHAP.    XVIII. 

specially  pleaded  by  the  defendant,  or  it  will  be  dis- 
regarded by  the  court.134  No  defendant  can  avail 
himself  of  any  statute  of  limitation,  upon  the  general 
issue.135 

§  472.  A  national  statute  of  limitation  for  patent  suits, 
has  been  in  existence  and  in  force  since  the  beginning  of 
1898.  That  statute  provides  that  there  shall  be  no  money 
recovery  in  any  such  suit,  for  any  infringement  committed 
more  than  six  years  before  the  beginning  of  such  an  ac- 
tion.136 

§  476.  State  statutes  of  limitation  can  never  apply  to 
any  right  of  action  under  a  patent,  if  that  particular  right 
is  subject  to  the  running  of  a  national  statute  of  limita- 
tions.137 This  point  of  law  follows  from  the  fact  that  the 
States  have  no  right  to  control  the  operation  of  the  patent 
laws;138  and  from  the  fact  that  Congress  never  adopted 
State  laws  for  the  government  of  Federal  courts  in  any 
case  where  the  constitution,  treaties  or  statutes  of  the 
United  States  specially  attend  to  the  subject.139 

§  477.  State  statutes  of  Umitation,  on  actions  based 
on  torts  unaccompanied  by  force,  apply  to  such  actions 
for  infringements  of  patents,  as  are  not  subject  to  any 
national  statute  of  limitation.140 

§  477a.  The  twenty-eighth  defence  may  be  raised  by 

134 1  Chitty  on  Pleading,  498.  County  of  Logan,  30  F.  R.  256, 

135  Neale  v.  Walker,  1  Cranch's  1887. 

Circuit  Court  Reports,  57,  1802.  13S  M'Culloch  v.   Maryland,   4 

Contra,  Peters  v.  Hangar,  134  Wheaton,  436,  1819. 

F.  R.  586,  1904.  ™  Re^dsed    Statutes,     Section 

138  29  Statutes  at  Large,  p.  694,  721;  Section  34  of  the  Judiciary 

Ch.  391,  Section  6.  Act  of  1789;  1  Statutes  at  Large, 

137  Sayles    v.    Oregon    Central  Ch.  20,  p.  92. 

Railroad   Co.,   4  Bann.   &  Ard.  140  Campbell  v.  Haverhill,   155 

429,    1879;    Hayden   v.    Oriental  U.  S.  613,  1895. 
Mills,  22  F.  R.  103,  1884;  May  v. 


CHAP.    XVIII.]  ACTIONS   AT    LAW  551 

answer,  unless  the  illegality  appears  on  the  face  of  the 
patent.141 

§  478.  Replications  and  subsequent  pleadings  are  sel- 
dom required  in  patent  cases,  because,  most  of  the  pleas 
applicable  to  such  cases  are  pleas  in  bar  by  way  of  traverse, 
and  not  by  way  of  confession  and  avoidance.142  The 
principal  exceptions  are  the  plea  of  a  license,  the  plea  of  a 
release,  and  the  plea  of  a  statute  of  limitation.  If  the 
plaintiff  purposes  to  deny  the  existence  of  a  license  or 
release,  as  the  case  may  be,  his  replication  should  be  by 
way  of  traverse  to  the  plea,  and  should  conclude  to  the 
country,  and  thus  tender  issue.  So,  also,  if  the  plaintiff 
can  show  that  the  license  or  release  covered  only  a  part 
of  the  infringement  covered  by  the  declaration,  the  gen- 
eral replication  by  way  of  traverse  will  be  sufficient.143 
If  the  plaintiff  cannot  deny  the  existence  of  a  full  paper, 
but  purposes  to  show  that  it  was  obtained  by  duress  or 
by  fraud,  or  that  it  has  been  effectually  revoked,  his 
replication  will  state  the  facts  by  way  of  confession  and 
avoidance  of  the  plea,  and  will  conclude  with  a  verifica- 
tion. It  will  then  be  the  duty  of  the  defendant  to  file  a 
rejoinder  to  the  replication.  If  he  can  deny  the  duress,  or 
the  fraud,  or  the  revocation,  as  the  case  may  be,  his  re- 
joinder will  be  by  way  of  traverse,  and  will  conclude  by 
tendering  issue.  If,  however,  he  cannot  deny  the  truth  of 
the  replication,  but  can  avoid  its  effect  by  showing  that 
the  plaintiff  freely  ratified  the  license  or  release  after  the 
alleged  duress  terminated,  or  the  alleged  fraud  became 
known  to  him,  or  that  he  annulled  the  revocation  after 
making  it,  then  the  defendant's  rejoinder  will  be  by  way 
of  confession  and  avoidance,  and  will  conclude  with  a 

141  Weston  Electrical  Inst.  Co.  142  Brickill  v.  Hartford,  57  F.  R. 

v.  Empire  Electrical  Inst.  Co.,  136      219,  1893. 
F.  R.  599,  1905.  ,43  1  Chitty  on  Pleading,  596. 


552  LCTI0N8  AT  LAW  [chap,   xviit. 

verification,  and  will  render  necessary  a  sur-rejoinder 
from  tlie  plaintiff,  denying  the  truth  of  the  rejoinder,  and 
putting  himself  upon  the  country. 

§  481.  A  .similiter  must  be  filed  or  added  by  or  on  behalf 
of  the  other  party,  whenever  either  the  plaintiff  or  defend- 
ant properly  tenders  issue.  As  the  party  to  whom  issue  is 
well  tendered,  has  no  option  but  to  accept  it,  the  similiter 
may  be  added  for  him.  It  is  a  mere  matter  of  form,  but 
it  is  a  form  which  should  always  be  attended  to  in  common- 
law  pleading.  Its  omission  has  sometimes  constituted  a 
fatal  defect,1" 

§  482.  A  demurrer  may  be  interposed  by  either  party  in 
an  action  at  law,  to  any  pleading  of  his  opponent,  except 
another  demurrer.14"'  When  a  demurrer  is' interposed,  the 
court  will  examine  all  the  pleadings  in  the  case,  and  will 
generally  decide  against  the  party  who  first  filed  a  sub- 
stantially defective  one.110  The  principal  exception  to 
this  rule  is,  that  where  the  declaration  is  the  pleading 
demurred  to,  the  demurrer  will  not  be  sustained  if  it  is 
too  large;  that  is,  if  it  is  pointed  at  an  entire  declaration, 
some  independent  part  of  which  is  good  in  law.147  This 
exception  does  not  apply  to  demurrers  to  pleas,148  or 
replications,149  or  rejoinders,150  for  it  is  in  the  nature  of 
those  pleadings  to  be  entire,  and  if  bad  in  part,  to  be  bad 
for  the  whole. 

§  483.  Demurrable  declarations  occur  in  patent  cases 
when  the  patent  appears  to  be  void  on  its  face,  or  by  reason 
of  some  fact  within  judicial  notice;  or  when  the  plaintiff's 
pleader  omits  some  of  the  allegations  which  are  necessary 

,44Earle  v.  Hall,  22  Pickering  147 1  Chitty  on  Pleading,  665. 

(Mass.),  102,  1839.  14S 1  Chitty  on  Pleading,  546. 

145  1   Chitty  on  Pleading,  661,  149 1  Chitty  on  Pleading,  644. 

666.  ls0 1  Chitty  on  Pleading,  651. 

148  1  Chitty  on  Pleading,  668. 


CHAP.    XVIII.]  ACTIONS    AT    LAW  553 

parts  of  such  a  pleading;  or  when  lie  makes  those  allega- 
tions in  improper  form;  or  where  he  makes  the  statement 
of  infringement  cover  a  space  of  time,  pari  or  all  of  which 
is  remote  enough  to  be  barred  by  the  statute  of  limitation. 
It  will  rarely  occur  that  the  whole  of  an  infringement  de- 
clared upon  can  plausibly  be  claimed  to  be  thus  barred; 
but  it  may  not  be  unknown  for  declarations  to  allege  that 
the  infringement  sued  on  began  at  a  point  of  time  more 
than  six  years  before  the  beginning  of  the  action,  and  was 
continued  till  after  that  limit  was  passed.  If,  in  such  a 
case,  the  defendant  would  interpose  the  statute  of  limita- 
tion to  that  part  of  the  infringement  which  occurred  more 
than  six  years  before  the  bringing  of  the  suit,  he  may  do  so 
by  a  special  demurrer  aimed  at  the  questionable  part  of 
the  right  of  action.  If,  in  such  a  case,  he  demurs  generally 
to  the  whole  declaration,  his  demurrer  will  be  overruled, 
because  it  will  appear  on  the  argument  that  an  independ- 
ent, divisible  part  of  the  right  of  action  sued  upon  is  un- 
barred by  the  statute,151 

§  484.  Demurrable  pleas  occur  in  patent  cases  when- 
ever the  facts  stated  therein  constitute  no  defence  to  the 
action;  or  when  they  are  in  improper  form;  or  when  the 
statute  of  limitation  is  pleaded  to  the  whole  of  a  right  of 
action,  only  a  part  of  which  is  old  enough  to  be  barred 
thereby ; for  a  plea  which  is  bad  in  part,  is  bad  altogether.15'2 

§  486.  A  joinder  in  demurrer  is  the  proper  response  to 
such  a  pleading  in  a  patent  action,  as  well  as  any  other. 
If  a  plaintiff  attempts  to  demur  to  a  demurrer,  or  refuses 
to  join  issue  of  law  upon  it,  he  thereby  discontinues  his 
action;  and  if  a  defendant  does  so  he  discontinues  his 
defence.1''3    But  the  actual  filing  in  writing  of  a  joinder  in 

151  1  Chitty  on  Pleading,  665.        Section  .33;  1  Chitty  on  Pleading, 

152  1  Chitty  on  Pleading,  546.        169. 
I3:i  Gould's  Pleadings,  Ch.  IX, 


554  ACTIONS    AT    LAW  [CHAP.    XVIII. 

demurrer  is  generally  waived,  and  demurrers  are  generally 
brought  on  for  argument  without  that  formality. 

When  a  demurrer  to  an  entire  declaration  is  sustained, 
on  a  ground  which  cannot  be  cured  by  amendment,  the 
plaintiff  may  file  an  exception,  and  take  the  case  to  the 
Circuit  Court  of  Appeals  for  a  review  of  the  decision  upon 
the  demurrer;  and  he  must  do  so,  or  abandon  his  action. 
But  where  a  demurrer  to  a  declaration  is  overruled,  the 
defendant  may  either  file  an  exception  and  take  the  case 
to  the  Circuit  Court  of  Appeals  for  review,  or  may  obtain 
leave  of  court  to  file  a  plea  to  the  declaration.  If  he  takes 
the  latter  course,  he  cannot  set  up  in  that  plea  any  defence 
which  was  set  up  in  the  overruled  demurrer.  And  if  his 
other  defences  fail  on  the  trial,  and  he  afterward  takes 
the  case  to  the  Circuit  Court  of  Appeals,  he  cannot  get  a 
review  of  the  decision  of  the  District  Court  overruling 
his  demurrer  to  the  declaration.  For  this  reason,  it  is  not 
wise  to  trust  any  vital  defence  to  the  carriage  of  a  demur- 
rer, except  where  the  defendant  has  no  other  vital  defence, 
or  except  where  he  is  certain  that  his  demurrer  will  not  be 
overruled. 

Where  a  demurrer  to  a  plea  is  sustained,  on  a  ground 
which  cannot  be  cured  by  amendment,  the  defendant  may 
file  an  exception,  and  take  the  case  to  the  Circuit  Court  of 
Appeals  for  a  review  of  the  decision  upon  the  demurrer; 
or  he  may  go  to  trial  upon  any  other  plea  which  he  may 
have  filed,  and  which  has  not  been  demurred  to,  or  has 
repelled  a  demurrer.  If  he  takes  the  latter  course,  and  is 
beaten  on  the  trial,  and  afterward  takes  the  case  to  the 
Circuit  Court  of  Appeals,  he  ought,  in  that  tribunal,  to 
get  a  review  of  the  decision  of  the  District  Court  sustain- 
ing the  demurrer  to  his  plea;  for  he  could  not  prevent  the 
filing  of  that  demurrer,  and  without  such  a  review  can  get 
no  appeal  from  the  decision  of  the  District  Court  sustain- 


CHAP.    XVIII.]  ACTIONS   AT   LAW  555 

ing  it.  But  where  a  demurrer  to  a  plea  is  overruled,  the 
plaintiff  must  stand  by  that  demurrer,  and  take  the  case 
to  the  Circuit  Court  of  Appeals  upon  that  issue  alone,  or 
if  he  goes  to  trial  without  doing  so,  he  will  thereby  waive 
his  demurrer;  and  if  he  is  unsuccessful  on  the  trial,  and 
thereafter  takes  the  case  to  the  Circuit  Court  of  Appeals, 
he  cannot  secure  in  that  court  a  review  of  the  decision  of 
the  court  below,  overruling  his  demurrer  to  the  plea. 

§  487.  The  trial  of  an  action  at  law  for  infringement  of 
a  patent  may  be  by  a  jury,  or  by  a  judge,  or  by  a  referee. 
The  first  of  these  sorts  of  trial  is  the  only  proper  one, 
except  in  cases  where  both  parties  agree  to  substitute  one 
of  the  others.  Cases  of  the  kind  may  be  tried  by  the 
judge,  where  the  parties  file  with  the  clerk  a  stipulation 
in  writing  waiving  a  jury; 154  and  trial  by  a  referee  ap- 
pointed by  the  court,  with  the  consent  of  both  parties, 
is  a  mode  of  trial  fully  warranted  by  law.155 

§  488.  Trial  by  jury  must,  in  the  absence  of  contrary 
consent  by  the  parties,  be  by  a  jury  of  twelve  men.  Una- 
nimity is  necessary  to  a  verdict  of  a  jury  in  a  Federal 
court,  even  in  California  or  Nevada;  though  the  statutes 
of  those  States  provide  that  in  their  courts,  a  legal  verdict 
may  be  found  when  three-fourths  of  the  members  of  a 
jury  agree.  The  laws  of  those  States  on  that  point  are 
not  covered  by  Section  721  of  the  Revised  Statutes,  and 
so  made  rules  of  decision  in  Federal  courts;  because  the 
Federal  Constitution  otherwise  provides.  That  provision 
is  found  in  its  seventh  amendment,  and  in  the  following 
language:  "In  suits  at  common  law,  where  the  value  in 
controversy  shall  exceed  twenty  dollars,  the  right  of  trial 
by  jury  shall  be  preserved."  It  is  true  that  unanimity 
was  not  necessary  to  the  verdicts  of  juries  in  England  till 

lbi  Revised    Statutes,    Section  I55  Heckers  v.  Fowler,  2  Wal- 

649.  lace,  123,  1864. 


556  ACTIONS    AT    LAW  [CHAP.     Will. 

after  the  reign  of  Edward  the  First,168  and  that  it  was 
never  required  in  Scotland.167  But  the  kind  of  "trial  by 
jury,"  known  in  England  and  in  the  United  States  when 
the  seventh  amendment  was  proposed  by  Congress,168 
and  when  it  was  ratified  by  three-fourths  of  the  States,1  ;' 
is  doubtless  the  kind  of  trial  guaranteed  by  that  amend- 
ment.1'50 Therefore,  no  law  providing  for  any  other  kind 
of  trial  by  jury  can  be  enforced  in  a  United  States 
court. 

§  489.  The  practice  in  actions  at  law  in  the  Federal 
courts  is  not  uniform  throughout  the  United  States.  There 
are  no  general  rules  governing  the  District  Courts  when 
sitting  as  law  courts.  When  thus  sitting,  each  District 
Court  is  governed,  in  matters  of  practice,  by  the  laws  of 
the  State  in  which  it  is  established,  so  far  as  those  laws  are 
applicable; 161  and  on  points  where  no  law  exists,  it  is  gov- 
erned by  rules  or  customs  of  its  own  making  or  observance. 
No  Act  of  Congress  is  necessary  to  enable  a  United  States 
court  to  make  and  enforce  its  own  rules  of  practice.  It 
is  only  necessary  that  such  rules  be  not  repugnant  to  the 
laws  of  the  United  States.162 

§  490.  The  rules  of  evidence  which  are  used  in  the  trial 
of  patent  causes  are  the  ordinary  rules  of  the  common  law, 
as  modified  by  the  statutes  of  the  particular  States  in 
which  such  trials  occur,163  and  as  adapted  to  the  circum- 

156Bracton,  Liber  IV,  Ch.  19;  1(">  Thompson  v.  Utah,  170  U.  S. 

Fleta,  Liber  IV,  Ch.  9;  Britton,  349,  1898. 
Liber  II,  Ch.  21.  161  Revised     Statutes,     Section 

157  Barrington  on  the  Statutes,  914. 

Ch.  29,  p.  20;  17  &  18  Victoria,  162  Heckers  v.  Fowler,  2  Wal- 

Ch.  59;  22  &  23  Victoria,  Ch.  7;  lace,  123,  1864.  ' 
31  &  32  Victoria,  Ch.  100,  Sec-  183  Vance  v.  Campbell,  1  Black, 

tion48.  427,   1861;  Hausknecht  v.  Clay- 

158  September  25,  1789.  pool,  1  Black,  431, 1861 ;  Wright  v. 

159  November  3,  1791.  Bales,  2  Black,  535,  1862. 


CHAP.    XVIII.]  ACTIONS    AT    LAW  557 

stances  of  patent  litigation  by  the  decisions  of  the  United 
States  courts. 

§491.  Evidence  to  support  his  declaration  must  of 
course  be  introduced  by  a  plaintiff  in  a  patent  suit  before 
the  defendant  can  be  called  upon  to  prove  any  defence. 
Where  the  complainant  or  the  defendant  is  a  corporation, 
and  that  fact  is  not  admitted  in  the  defendant's  plea,  it 
must  be  proved  by  the  plaintiff;  and  it  may  be  proved  by 
a  certified  copy  of  its  charter  or  articles  of  incorporation. 
Aside  from  that  preliminary  matter,  the  first  item  of  the 
plaintiff's  evidence  consists  of  the  letters  patent  sued 
upon,  or  of  a  written  or  printed  copy  of  the  same,  authenti- 
cated by  the  seal  and  certified  by  the  Commissioner  or 
the  Acting  Commissioner  of  the  Patent  Office.161  Either 
the  letters  patent,  or  such  a  copy  thereof,  is  prima  facie 
evidence  of  the  validity  of  the  letters  patent,  unless  it 
appears  on  its  face  not  to  be  such  a  form  of  document 
as  the  statute  prescribes.165  This  presumption  is  strength- 
ened by  the  circumstance  that  the  alleged  anticipating 
patent  was  considered  by  the  Patent  Office  in  connection 
with  the  application  for  the  patent  in  suit.166  And  the  pre- 
sumption is  weakened  by  the  circumstance  that  closely 

164  Revised  Statutes,  Section  F.  R.  996,  1898;  Consolidated 
892.  R'y  Co.  v.  Adams  &  Westlake 

165  Hunt  Bros.  Fruit  Packing  Co.,  161  F.  R.  343,  1908;  San 
Co.  v.  Cassidy,  53  F.  R.  259,  1892;  Francisco  Cornice  Co.  v.  Beyrle, 
Singer  Mfg.  Co.  v.  Brill,  54  F.  R.  195  F.  R.  516,  1912;  Consolidated 
383,  1892;  Holloway  v.  Dow,  54  Contract  Co.  v.  Hassan  Paving 
F.  R.  514,  1893;  Harper  &  Rey-  Co.,  227  F.  R.  436,  1915. 

nolds  Co.  v.  Wilgus,  56  F.  R.  588,  168  Hale  &  Kilburn  Mfg.  Co.  v. 

1893;    Chase    v.    Fillebrown,    58  Oneonta,  etc.,  R'y  Co.,  129  F.  R. 

F.  R.  376,  1893;  Schwarzwaelder  598,  1904;  Beckwith  v.  Malleable 

v.  Detroit,  77  F.  R.  889,   1896;  Iron  Range  Co.,  174  F.  R.  1001, 

J.  J.  Warren  Co.  v.  Rosenblatt,  80  1910;  New  Jersey  Wire  Cloth  Co. 

F.  R.  540,   1897;  Wilkins  Shoe-  v.  Buffalo  Expanded  Metal  Co., 

Button  Fastener  Co.  v.  Webb,  89  131  F.  R.  265,  1904. 


558  ACTIONS    A.T    LAW  [CHAP.    XVIII. 

similar  prior  references  were  not  interposed  or  considered 
by  the  Office  in  the  prosecution  of  the  application."'7 
But  the  printed  memorandum,  which  is  usually  made  at 
the  head  of  the  specification  of  a  patent,  and  which  states 
the  date  of  the  filing  of  the  application  for  that  patent, 
is  not  even  prima  facie  evidence  of  that  date.168  That 
point,  if  it  is  material  in  a  particular  case,  must  be  proved 
by  a  certified  copy  of  the  application  itself.  The  letters 
patent  themselves  are  also  conclusive  as  against  collateral 
attack  in  an  infringement  suit  that  all  formal  requisites 
to  issuance  have  been  complied  with,  except  such  as  may 
appear  on  the  face  of  the  patent.169 

§  492.  Reissue  letters  patent  are  also  prima  facie  evi- 
dence of  their  own  validity,  on  all  of  the  three  points  which 
are  involved  in  that  question.  They  are  so  in  respect  of  the 
fifteenth  defence;  because  the  fact  that  the  Commissioner 
assumed  jurisdiction,  by  treating  the  original  letters  pat- 
ent as  a  proper  subject  for  a  reissue,  is  at  least  prima  facie 
evidence  that  he  had  jurisdiction.170  They  are  so  in  re- 
spect of  the  sixteenth  defence;  because  the  presumption 
is  that  the  Commissioner  knew  the  law,  and,  knowing  it, 
would  not  grant  a  broadened  reissue  after  a  long  lapse  of 
time  from  the  date  of  the  original.171  They  are  so  in  re- 
spect of  the  seventeenth  defence;  because  the  presumption 
is  that  the  Commissioner  would  not  violate  the  law,  by 
granting  a  reissue  for  a  different  invention  from  any  which 

167  American  Soda  Fountain  Co.  Co.  v.  Maurer,  44  F.  R.  620,  1890; 

v.  Sample,  130  F.  R.  145,  1904;  See  Section  129  of  this  book. 
Westinghouse    Electric    &    Mfg.  "»  Wayne  Mfg.  Co.  v.  Coffielcl 

Co.  v.  Toledo,  P.  C.  &  L.  R'y  Co.,  Motor  Washer  Co.,   227  F.   R. 

172  F.  R,  371,  1909;  Elliott  &  Co.  987,  1915. 

v.  Youngstown  Car  Mfg.  Co.,  181  17°  Brooks  v.   Bicknell,   3   Mc- 

F.  R.  345,  1910.  Lean,  258,  1843. 

198  International    Terra    Cotta  171  Clark  v.  Wooster,  119  U.  S. 

326,  1886. 


CHAP.    XVIII.]  ACTIONS   AT   LAW  559 

the  original  letters  patent  shows  was  intended  to  have  been 
claimed  therein. 

§  494.  It  is  an  undoubted  presumption  of  law  that 
letters  patent,  which  appear  on  their  face  to  be  in  full 
force,  are  so  in  fact.  Such  a  document  is  therefore  prima 
facie  evidence  that  it  neither  has  been  repealed  by  a  decree 
of  court,  nor  has  expired  because  of  the  expiration  of  some 
foreign  patent  for  the  same  invention.  It  follows  that 
neither  the  nineteenth  nor  twentieth  defence  needs  to  be 
anticipated  by  a  plaintiff  when  introducing  his  prima 
facie  evidence. 

§  495.  After  introducing  the  letters  patent  in  evidence, 
unless  the  plaintiff  is  himself  the  patentee,  his  next  step 
is  to  prove  his  title  to  the  right,  upon  the  infringement  of 
which  the  action  is  based.  Where  the  letters  patent  were 
originally  granted  to  an  assignee  of  the  inventor,  they  are 
prima  facie  evidence  of  title  in  that  assignee.172  But 
where  the  plaintiff  obtained  his  title  after  the  letters  pat- 
ent were  granted,  he  must  prove  himself  to  have  been  the 
assignee  of  the  patent,  or  at  least  a  grantee  under  it  as  to 
the  territory  wherein  the  alleged  infringement  occurred, 
when  that  infringement  occurred.  He  may  do  either  of 
these,  by  properly  introducing  in  evidence  the  original 
assignments  or  grants  which  constitute  his  chain  of  title. 

Where  such  a  document  was  acknowledged  before  a 
notary  public,  or  other  magistrate  specified  in  the  statute, 
the  certificate  of  that  acknowledgment  is  prima  facie 
evidence  of  the  execution  of  the  document.173  In  the  ab- 
sence of  such  an  acknowledgment,  it  is  necessary  to  prove 

172  Whitcomb  v.  Coal  Co.,  47  391,  Section  5,  p.  693;  De  Laval 
F.  R.  655,  1891;  Elliott-Fisher  Separator  Co.  v.  Vermont  Farm- 
Co.  v.  Underwood  Typewriter  Mach.  Co.,  109  F.  R.  813,  1901; 
Co.,  176  F.  R.  372,  1909.  Lanyon  Zinc  Co.  v.  Brown,  115 

173  29   Statutes   at   Large,   Ch.  F.  R.  154,  1902. 


560  ACTIONS    AT    LAW  [CHAP.    XVIII. 

such  a  paper  according  to  the  rules  of  the  common  law. 
When  proceeding  under  those  rules,  to  prove  a  paper 
which  appears  to  have  been  subscribed  by  a  witness,  as 
well  as  by  the  grantor  or  assignor,  the  first  step  is  to  pro- 
duce that  witness,  and  take  his  testimony  to  the  fact  and 
the  genuineness  of  his  signature;  or  if  he  cannot  be  pro- 
duced, the  first  step  consists  in  proving,  if  possible,  what 
has  become  of  him,  and  if  that  is  impossible,  in  proving 
that  fact.1730  When  this  step  has  been  taken,  and  also 
where  there  is  no  subscribing  witness  to  the  document 
to  be  proved,  it  can  be  proved  by  testimony  of  the  genuine- 
ness of  the  signature  of  him  who  executed  it,  as  assignor 
or  grantor,  as  the  case  may  be.  Where  an  original  assign- 
ment or  grant,  which  is  essential  to  the  plaintiff's  title, 
cannot  be  produced,  its  character  may  be  proved  according 
to  the  rules  of  the  law  pf  evidence  relevant  to  such  cases. 
Whether  a  certified  copy  of  the  Patent  Office  record  of 
an  assignment  or  grant  of  a  patent  is  admissible  evidence 
of  the  original  document  or  of  the  Patent  Office  record 
thereof,  is  a  question  which  was  long  ago  decided  in  the 
affirmative,174  and  afterward  was  decided  in  the  negative,175 
and  then  in  the  affirmative  again,176  and  finally  again  in 
the  negative.177    Assuming  the  negative  decisions  to  be 

1730  This  is  the  old  common-law  Box   &   Paper   Co.   v.   American 

rule.    In  most  jurisdictions  it  will  Paper  Pail  &  Box  Co.,  55  F.  R. 

be  found  to  have  been  abrogated  488,  1893. 

either  by  statute  or  judicial  deci-  I75  Paine  v.  Trask,  56  F.  R.  233, 

sion.    See  Wigmore  on  Evidence.  1893;    Mayor   of   New   York   v. 

Sections  1290  et  seq.  American  Cable  Ry.  Co.,  60  F.  R. 

174  Brooks  v.  Jenkins,  3  McLean,  1016,  1894. 

436,  1844;  Parker  v.  Haworth,  4  178  Standard    Elevator    Co.    v. 

McLean,  370, 1848;  Lee  v.  Blandy,  Crane  Elevator  Co.,  76  F.  R.  792, 

2  Fisher,  91,   1860;  Dederick  v.  1896. 

Whitman    Agricultural    Co.,    26  177  National  Cash  Register  Co. 

F.  R.  763,  1886;  National  Folding  v.   Navy  Cash  Register  Co.,  99 


CHAP.    XVIII.]  ACTIONS   AT    LAW  .~>(il 

right,  it  seems  that  the  inadmissibility  of  such  a  certified 
copy  is  waived  by  an  omission  to  make  a  proper  objection 
when  such  a  copy  is  offered  in  evidence.178 

§  496.  It  is  not  necessary  for  any  plaintiff  to  prove  in  his 
-prima  facie  evidence  that  the  defendant  has  no  license 
or  release  with  which  to  defend.179  But  it  is  required  of 
him  to  prove  that  he  never  made  nor  sold  any  specimen 
of  the  invention  without  marking  it  "patented,"  together 
with  the  day  and  year  the  patent  was  granted ;  or  that  the 
defendant  was  duly  notified  that  his  doings  constituted 
an  infringement  of  the  patent,  and,  after  such  notice, 
continued  to  infringe.180 

The  requirements  of  the  statute  providing  for  marking 
must  be  strictly  complied  with  and  where  a  patented 
device  is  part  of  a  complete  structure  the  marking  must  be 
on  the  patented  device  itself,  or,  where  such  a  method  of 
marking  cannot  be  followed,  on  a  package,  or  label.181 

§  497.  Proof  of  the  making,  selling,  or  using,  by  the 
defendant,  before  the  beginning  of  the  suit,  of  a  specimen 
or  specimens  of  a  process  or  thing  which  the  plaintiff 
claims  is  covered  by  his  patent,  constitutes  the  next  step 
to  be  taken  in  proving  a  prima  facie  case.  This  point  is 
often  covered  by  a  stipulation  of  the  parties.  In  the  ab- 
sence of  such  a  stipulation  the  point  of  proof  may  be  one 

F.  R.  89,  1900;  American  Graph-          179  Fischer  v.  Hayes,  6  F.  R.  79, 

ophone  Co.  v.  Leeds  &  Catlin  Co.,  1881. 

140   F.    R.   981,    1905;    Eastern          18°Dunlap    v.    Schofield,     152 

Dynamite  Co.  v.  Keystone  Pow-  U.  S.  244,  1894;  Traver  v.  Brown, 

der  Mfg.  Co.,  164  F.  R.  47,  1908;  62  F.  R.  933,  1894;  Matthews  & 

Johnston  v.  Southern  Well  Works  Willard    Mfg.    Co.    v.    National 

Co.,  208  F.  R.  145,  1913.  Brass  &  Iron  Works,  71  F.  R.  518, 

178  International    Tooth-Crown  1895;  Campbell  v.  City  of  New 

Co.  v.  Bennett,  72  F.  R.  170, 1896;  York,  81  F.  R  184,  1897. 
A.  B.  Dick  Co.  v.  Henry,  75  F.  R.  IS1  Lichtenstein  v.  Phipps,  168 

388,  1896.  F.  R.  61,  1909. 


562  ACTIONS   AT    LAW  [CHAP.    XVIII. 

of  difficulty,  for  courts  of  law  have  no  power  to  order  in- 
spections of  a  defendant's  works;  182  though  the  defendant 
may  be  called  as  a  witness,  and  compelled  to  describe 
what  he  has  done;  l83  and  a  discovery  of  the  defendant's 
doings  may  be  obtained  by  a  bill  in  equity  filed  in  aid  of 
an  action  at  law.184  Where  a  defendant  cannot  be  relied 
upon  to  testify  fairly  and  fully,  the  plaintiff  must  secure 
other  evidence;  for  it  is  necessary  to  a  verdict  in  an  ac- 
tion at  law  for  an  infringement  of  a  patent,  that  both  the 
nature  and  extent  of  that  infringement  be  shown  to  the 
jury  by  satisfactory  proof.  Evidence  of  the  nature  of  a 
defendant's  doings  is  the  first  element  of  evidence  of  in- 
fringement; and  evidence  of  their  extent  is  an  indispens- 
able part  of  the  necessary  evidence  of  damages.185 

§  498.  Evidence  of  infringement  is  completed  with 
evidence  of  the  defendant's  doings,  if  what  he  did  was  ob- 
viously and  unquestionably  identical  with  what  is  cov- 
ered by  the  patent  in  suit,186  or  if  he  is  estopped  from  de- 
nying identity  between  those  doings  and  that  patent.187 
And  even  where  differences  are  apparent,  the  complainant, 
if  he  chooses,  may  rest  when  he  has  introduced  evidence 
or  a  stipulation  stating  the  character  of  the  acts  done  by 
the  defendant.  In  that  case  the  court  will  interpret  the 
words  of  the  patent  in  the  sense  in  which  they  are  ordi- 

182  Parker  v.  Bigler,  1  Fisher,  669,  1882;  Barrett  v.  Hall,  1 
287,  1857.  Mason,    471,     1818;    Hayes     v. 

183  Roberts  v.  Walley,  14  F.  R.  Bickelhoupt,  23  F.  R.  184,  1885; 
169,  1882;  Delamater  v.  Rein-  Freese  v.  Swartchild,  35  F.  R.  141, 
hardt,  43  F.  R.  76,  1890.  1888;  Sugar  Mfg.  Co.  v.  Yaryan 

184  Colgate  v.  Compagnie  Fran-  Mfg.  Co.,  43  F.  R.  148,  1890; 
caise,  23  F.  R.  85,  1885.  Hardwick  v.  Masland,  71  F.  R. 

185  National  Car-Brake  Shoe  889,  1895;  McDowell  v.  Kurtz,  77 
Co.  v.  Mfg.  Co.,  19  F.  R.  519,  F.  R.  207,  1896. 

1884.  187  Time  Telegraph  Co.  v.  Him- 

18°  Jennings  v.  Kibbe,  10  F.  R.      mer,  19  F.  R.  322,  1884. 


CHAP.    XVIII.]  ACTIONS   AT    LAW  563 

narily  employed,  and,  with  the  knowledge  of  the  invention 
thus  acquired,  will  determine  whether  the  acts  done  by 
the  defendant  amount  to  infringement.188  But  judges 
do  not  always  possess  the  requisite  knowledge  of  the  mean- 
ing of  the  terms  of  art  or  science  used  in  letters  patent, 
and  are  not  always  able  to  accurately  weigh  similarities 
and  differences  in  mechanics,  chemistry,  electricity,  or 
other  physics,  without  receiving  special  information 
thereon.  Therefore  it  is  always  proper  and  generally 
necessary  to  introduce  expert  testimony  to  show  that  the 
differences  are  all  immaterial,  and  to  show  that  the  de- 
fendant's doings  actually  did  constitute  an  infringement 
of  the  plaintiff's  patent.189 

Experts  in  patent  cases  are  mainly  experts  in  mechan- 
ics, chemistry,  or  electricity;  and  a  man  who  has  exten- 
sive theoretical  and  practical  knowledge  of  either  of  those 
sciences,  is  a  mechanical,  chemical,  or  electrical  expert, 
as  the  case  may  be;  and  a  man  may  be  an  expert  in  any 
other  science,  who  possesses  the  same  qualifications  in  it. 
The  opinions  of  such  experts  are  admissible  upon  the 
points  of  fact  to  which  they  are  relevant;  but  in  order  to 
have  much  weight,  they  must  be  accompanied  by  state- 
ments of  good  reasons  upon  which  they  are  based.190 
The  expert  may  testify  as  to  experiments  that  he  has 
made  to  test  the  theory  of  the  patent  and  the  claim  of  in- 
fringement, although  a  number  of  judges  have  commented 
on  the  weakness  of  such  testimony  when  the  experiments 
were  conducted  under  such  conditions  that  the  opposing 

188  American  Linoleum  Co.  v.  Co.  v.  Sanderson,  3  Blatch.  184, 
Nairn  Linoleum  Co.,  44  F.  R.  756,  1854;  Livingston  v.  Jones,  1 
1890.  Fisher,    521,    1859;    Conover    v. 

189  Overweight  Elevator  Co.  v.  Rapp,  4  Fisher,  57,  1859;  Norton 
Improved  Order  of  Red  Men,  94  v.  Jensen,  49  F.  R.  864,  1892; 
F.  R.  161,  1899.  Briggs  v.  Central  Ice  Co.,  54  F.  R. 

190  United    States   Annunciator  379,  1892. 


56 1  \<  hons  at  law  [chap.  \\  tn. 

party  was  not  allowed  to  observe  them.191  An  expert 
may  properly  write  out  in  advance,  the  testimony  he  in- 
tends to  give;  hut  he  cannot  properly  adopt  and  insert 
in  his  deposition,  pr  read  in  open  court  as  his  testimony, 
any  exposition  of  the  subject  which  was  written  by  an- 
other man.1"'-  Conimunications  between  expert  witnesses 
and  the  parties  or  the  counsel  who  employ  them,  are  not 
privileged,103  and  therefore  it  is  proper  on  cross-examina- 
tion to  ascertain  and  record  the  origin  and  the  develop- 
ment of  the  opinions  which  such  witnesses  state  in  their 
depositions  or  oral  testimony. 

In  deciding  between  contradictory  expert  testimony, 
juries  should  consider  the  respective  reasons,  ability, 
knowledge,  and  fairness  of  the  experts.194  To  judge  ac- 
cording to  their  number  or  their  fame  would  be  unsafe. 
The  wealthier  litigants  are  generally  those  who  employ 
the  more  numerous  and  the  more  expensive  expert  wit- 
nesses; but  it  is  not  always  the  wealthier  litigant  who  is 
right  in  a  controversy,  nor  always  the  more  famous 
expert  who  is  right  in  his  opinion.    The  carefully  digested 

191Rynear    Co.    v.    Evans,    83  351, 1858;  Many  v.  Sizer,  1  Fisher, 

F.  R.  696,  1897;  Plunger  Elevator  17,   1849;  Hudson  v.  Draper,  4 

Co.  v.  Standard  Plunger  Elevator  Fisher,  256,  1870;  Page  v.  Ferry, 

Co.,  165  F.  R.  906,  1908;  Bethle-  1    Fisher,    298,    1857;   Carter   v. 

hem  Steel  Co.  v.  Xiles-Bement-  Baker,     1    Sawyer,    512,     1871; 

Pond  Co.,  166  F.  R.  880,  1909;  Spaulding  v.  Tucker,  Deady,  649, 

Bemis  v.  Charles  A.  Stevens  &  1869;   Cahoon  v.   Ring,    1    Cliff. 

Bros.,     177    F.    R.    717,    1910;  592,  1861;  Cox  v.  Griggs,  1  Bis- 

Chadeloid  Chemical  Co.  v.  Wilson  sell,  362,  1861;  Conover  v.  Roach, 

Remover  Co.,  220  F.  R.  681, 1915.  4  Fisher,    12,    1857;  Whipple  v. 

W  Emerson  Co.  v.  Nimocks,  88  Mfg.    Co.,   4   Fisher,    29,    1858; 

F.  R.  282,  1898.  Conover  v.  Rapp,  4  Fisher,  57, 

193  Lalance  &  Grosjean  Mfg.  1859;  Waterbury  Brass  Co.  v. 
Co.  v.  Haberman  Mfg.  Co.,  87  New  York  Brass  Co.,  3  Fisher, 
F.  R.  564,  1898.  43,  1858;  Bierce  v.  Stocking,   11 

194  Johnson  v.  Root,   1   Fisher,  Gray  (Mass.),  174,  1858. 


CHAP.    XVIII.]  ACTIONS   AT    LAW  565 

views  of  a  young  and  studious  scientist,  may  be  more 
nearly  true  than  the  more  hastily  formed  opinion  of  a 
more  distinguished  man.  And  testimony  based  on  ex- 
perience is  more  weighty  than  testimony  based  on  the 
theoretical  consideration. 195 

§  499.  No  expert  can  know  whether  a  particular  thing, 
done  or  made  by  a  defendant,  is  the  same  as  anything 
covered  by  a  particular  patent,  until  he  ascertains  what 
that  patent  covers.  But  the  latter  question  is  one  of 
construction  for  the  court,  and  not  a  question  of  evidence, 
to  be  sworn  to  by  an  expert,  and  decided  by  the  jury.1950 
In  the  regular  course  of  proceedings  in  trials  at  law,  as 
well  as  in  hearings  in  equity,  the  construction  of  the  pat- 
ent is  not  announced  by  the  judge  till  after  the  evidence  is 
taken.  This  practice  makes  it  proper  to  put  hypothetical 
questions  to  expert  witnesses.  The  hypothesis  in  such  a 
question  is  one  which  embodies  that  construction  of  the 
patent  upon  which  the  examining  counsel  thinks  it  both 
safe  and  sufficient  to  rely.  If,  when  charging  the  jury, 
the  judge  gives  a  different  construction  from  that  embodied 
in  the  hypothetical  question,  then  the  answer  to  that  ques- 
tion will  be  seen  to  be  immaterial,  and  the  jury  will  do 
right  to  disregard  it.  Examining  counsel  ought  therefore 
to  be  very  certain  that  his  hypothetical  construction  is 
the  true  one;  or  otherwise,  to  put  as  many  hypothetical 
questions  as  there  are  probable  favorable  constructions. 
Doing  the  latter,  he  may  have  a  favorable  answer  upon 
which  to  argue  to  the  jury,  if  he  secures  from  the  judge  a 
construction  which  corresponds  with  either  of  his  hypo- 
thetical questions.  A  statement  of  a  witness  that  a  partic- 
ular thing  does  or  does  not  infringe  a  particular  patent, 
is  inadmissible  in  evidence,  because  that  statement  in- 

195  Young  v.  Wolfe,  120  F.  R.  195<I  See  Section  500. 

958,  1903. 


566  \<  TIONS    \ T    LAW  [CHAP.    XVIII. 

dudes  a  construction  of  the  patent,  and  construction  of 
patents  is  the  duty  of  courts,  and  not  of  experts. 1% 

§  500.  Though  not  permitted  to  testify  to  the  construc- 
tion of  a  patent,197  experts  are  sometimes  called  upon  to 
testify  to  facts  which  positively  control  that  construc- 
tion.198 Where  the  state  of  the  art  is  the  subject  of  in- 
consistent evidence,  and  where  the  construction  of  the 
patent  depends  on  what  is  the  fact  in  that  regard,  the  judge 
will  not  charge  the  jury  that  the  patent  means  thus  and 
so,  but  will  tell  them  that  if  they  find  the  state  of  the  art 
to  be  so  and  so,  then  the  patent  is  entitled  to  such  and  such 
a  construction.199  In  cases  of  this  kind  it  may  occur  that 
the  jury,  in  deciding  upon  the  state  of  the  art,  must  re- 
ceive information  from  experts  relevant  to  the  mechanical 
nature  of  prior  things,200  as  well  as  information  from  other 
sources  relevant  to  the  prior  existence  of  those  things. 
Generally  speaking  all  questions  of  similarities  or  of  differ- 
ences between  things,  are  questions  for  the  jury  in  an 
action  at  law,201  and  are  therefore  proper  to  be  testified 
about  by  experts.202  Where  a  patent  covers  such  of  the 
things  described,  as  perform  a  particular  function,  it  is 
the  business  of  the  jury  to  decide,  and  therefore  proper  for 
an  expert  to  testify,  which  those  things  are.203  And  in 
general  all  issues  of  fact  including  the  issues  of  abandon- 
ment, invention  and  infringement  are  for  the  jury  to  de- 

™  Marsh  v.  Stove  Co.,  51  F.  R.  199  Burdell  v.  Denig,  92  U.  S. 

203,  1892;  Holmes  v.  Truman,  67  722,  1875. 

F.  R.  545,  1895.  200  McKay  &  Copeland  Mach. 

See  Section  189.  Co.  v.  Claflin,  58  F.  R.  354,  1893. 

197  Waterbury  Brass  Co.  v.  New  201  Tyler  v.  Boston,  7  Wallace, 

York   Brass   Co.,   3   Fisher,   54,  327,  1868. 

1858.  202  Myers     v.     Sternheim,     97 

19*  Marsh  v.  Stove  Co.,  51  F.  R.  F.  R.  625,  1899. 

203,  1892.  203  Silsby  v.  Foote,  14  Howard, 

218,  1852. 


CHAP.    XVIII.]  ACTIONS   AT   LAW  567 

cide  and  their  findings  on  these  issues  will  not  be  dis- 
turbed unless  against  the  weight  of  evidence.204 

An  exception  to  this  rule  is  where  the  defendants' 
device  is  made  under  a  patent  and  the  court  is  able  from 
mere  comparison  to  comprehend  what  are  the  inventions 
described  in  each  patent  involved  in  the  action.  In  such 
case  the  question  of  infringement  is  solely  one  of  law  for 
the  court  to  determine.205 

Though  not  permitted  to  testify  directly  on  any  ques- 
tion of  infringement,  experts  are  permitted  to  testify  on 
points  of  fact  which  control  the  answers  to  such  questions. 
For  example,  where  a  question  of  infringement  depends 
on  comparative  mode  of  operation,  an  expert  may  testify 
that  the  modes  of  operation  of  two  machines  are  substan- 
tially the  same,  or  are  substantially  different,  as  the  case 
may  be.  And  where  a  question  of  infringement  depends 
on  whether  a  particular  part  of  one  machine,  is  an  equiva- 
lent of  a  particular  part  of  another  machine,  an  expert 
may  testify  whether  they  perforin  the  same  function,  and 
if  so  whether  they  perform  that  function  in  substantially 
the  same  way. 

§  501.  Where  an  expert,  in  his  direct  examination,  ex- 
pounds the  whole,  or  a  part,  of  the  prior  art,  his  cross- 
examination  may  extend  to  the  same  sources  of  knowledge 
or  domains  of  experience.  But  where  an  expert  is  giving 
testimony  in  chief,  upon  points  of  fact  relevant  to  in- 
fringement, and  confines  that  testimony  to  the  similari- 
ties and  differences  between  the  plaintiff's  patent  and  the 
defendant's  doings,  he  cannot  be  cross-examined  on  the 
prior  art;  except  by  inquiring  whether  he  took  the  prior 
art  into  consideration,  when  forming  his  opinion  on  the 

204  Trustees  of  Masonic  Fund  v.         2°5  Singer  Mfg.  Co.  v.  Cramer, 
Fountain    Electrical,    etc.,    Cor-      192  U.  S.  265,  1904. 
poration,  218  F.  R.  642,  1914. 


.".r.s  actions  at  law  [chap.  win. 

significance  of  the  differences  between  the  plaintiff's 
patenl  and  the  defendant's  doings.  Thai  exceptional 
question  is  proper,  because  the  answer  will  show  whether 
the  expert   treated  the  plaintiff's  patenl   as  a  primary 

patent,  or  treated  it  as  a  secondary  patent,  when  he  was 
weighing  the  differences  between  it  and  the  defendant's 
doings;  and  because  the  validity  of  his  estimate  of  those 
differences,  may  depend  on  whether  he  was  right  or  was 
wrong  in  treating  it  as  he  did,  in  that  respect. 

The  cross-examination  of  experts,  cannot  extend  to  in- 
quiries into  the  characteristics  of  things  not  relevant  to 
the  case,  put  to  them  for  the  purpose  of  testing  their 
knowledge  or  their  fairness;  because  if  the  answers  ap- 
peared to  be  undeniably  correct,  they  would  be  wholly 
immaterial,  and  if  thought  to  be  erroneous  they  could  be 
shown  to  be  so,  only  by  the  testimony  of  others,  who  might 
themselves  be  the  mistaken  ones.  To  allow  such  a  ques- 
tion, would  thus  operate  to  introduce  an  immaterial  issue 
of  fact  into  a  case,  and  to  draw  the  attention  of  the  jury 
away  from  the  issues  of  the  pleadings.206 

206  Odiorne  v.  Winkley,  2  Gal-  tion  of  relevant  arts,  processes, 
lison,  51,  1814.  machines,  manufactures  or  coin- 
On  the  subject  of  the  proper  positions  of  matter,  and  of  the 
scope  of  examination  of  experts,  meaning  of  terms  of  art  or  science 
Equity  Rule  7  of  the  Southern  and  of  diagrams  or  formulae. 
District  of  New  York  is  of  inter-  "If  the  affidavit  or  deposition 
est.  It  is  as  follows:  of  any  expert  witness  contain 
"In  cases  where  under  Supreme  matter  forbidden  by  this  Rule, 
Court  Rule  48  the  direct  testi-  or  irrelevant  or  immaterial  mat- 
mony  of  experts  in  patent  causes  ter,  it  shall  not  be  answered  by 
is  taken  by  affidavit,  the  witnesses  the  opposite  party,  nor  shall  it 
shall  not  give  their  opinion  as  to  be  the  basis  of  any  cross-examina- 
the  meaning  of  any  patent  claim  tion  at  the  hearing,  and  the 
or  specification,  but  their  testi-  Court  at  any  stage  of  the  cause 
mony  shall  be  strictly  confined  may  strike  from  any  such  affida- 
to  an  explanation  of  the  opera-  vit  or  deposition  all  such  matter." 


CHAP.    WIN. |  ACTIONS    AT    LAW  569 

§  502.  The  last  part  of  a  plaintiff's  prima  facie  evidence, 
consists  in  proof  of  the  amount  of  his  damages,  sometimes 
supplemented  by  evidence  tending  to  show  that  a  judg- 
ment ought  to  be  entered  for  an  amount  greater  than  the 
actual  damages  sustained  by  him.207  The  matter  is 
mentioned  in  this  connection  for  the  sake  of  sym- 
metry; but  it  is  so  large  that  it  constitutes  the  subject 
of  a  separate  chapter  of  this  book.  To  that  chapter, 
recourse  may  be  had  for  detailed  information  upon  the 
subject. 

§  503.  Except  where  a  defendant  exercises  his  right  to 
demur  to  the  evidence,  or  to  move  the  court  to  direct  the 
jury  to  return  a  verdict  for  him,  at  the  close  of  the  plain- 
tiff's evidence  in  chief;  the  next  part  of  a  trial  is  the  intro- 
duction of  evidence  by  the  defendant  to  sustain  his 
defences.  The  possible  defences  in  patent  cases  are  twenty- 
eight  in  number.  In  prior  sections  in  this  chapter,  they 
are  consecutively  numbered  for  purposes  of  easy  reference, 
and  are  treated  in  respect  of  the  pleadings  which  they 
respectively  require,  and  the  results  which  they  respec- 
tively produce  in  patent  actions  at  law.  It  is  now  con- 
venient to  set  forth,  in  the  same  order,  the  leading  points 
of  the  law  of  evidence  applicable  to  each. 

§  504.  The  first  defence  will  sometimes  require  evidence 
to  show  that  the  terms  of  art  or  science  which  are  used  in 
the  patent,  have  such  a  meaning  that  the  court  is  bound 
to  construe  the  patent  to  be  one  for  a  principle,  or  for 
something  other  than  a  patentable  process,  or  a  machine, 
manufacture,  composition  of  matter,  or  design.  But  where 
a  patent  plainly  claims  only  the  peculiar  function  of  a 
described  machine,  the  first  defence  can  be  maintained 
without  any  evidence  outside  of  the  patent. 

§  505.  The  second  defence  may  sometimes  be  supported 
207  Revised  Statutes,  Section  4919. 


570  \<  TIOXS    AT    LAW  [CHAP.    Will. 

by  facts  of  which  the  court  will  take  judicial  notice.208 
Rut  evidence  to  show  the  state  of  the  art,  is  often  required 
to  show  want  of  invention.  A  patent  granted  for  an  im- 
plement pf  agriculture,  consisting  of  a  hoe-handle  with  a 
hoe  on  one  end  and  a  rake  on  the  other,  would  be  void 
for  want  of  invention,  even  if  both  new  and  useful.  -K> 
The  court  would  take  judicial  notice  of  the  prior  existence 
of  handles  having  hoes  attached  thereto,  and  of  other  like 
handles  having  rakes  fastened  to  one  end;  and  on  the  basis 
of  that  judicial  notice,  would  pronounce  such  a  patent 
to  be  invalid.  In  fact  the  court  will  take  judicial  notice 
of  all  practices  existing  generally  in  an  art  although  it 
may  be  necessary  for  the  individual  judge  to  determine 
the  facts  from  consultation  with  standard  literature  deal- 
ing with  the  subject  involved.210 

A  patent  for  a  particular  alleged  combination  in  a 
complicated  machine,  may  also  be  open  to  the  same  sort 
of  objection;  while  the  facts  upon  which  it  rests  in  the 
particular  case,  may  be  unknown  to  people  generally,  and 
unknown  to  judges  who  hear  patent  causes;  though  well 
understood  by  some  experts  and  some  mechanics.  In 
such  a  case,  it  is  necessary  to  introduce  evidence  of  those 
facts  in  order  to  show  want  of  invention.  Such  evidence 
may  consist  of  proof  of  the  prior  existence  of  the  parts 
of  the  alleged  combination,  and  proof  of  the  fact  that 
their  union  in  the  machine,  constitutes  not  a  real  combi- 
nation, but  an  aggregation  only. 

So  also,  where  want  of  invention  results  from  some 

208  Brown  v.  Piper,  91  U.  S.  37,  209  Reckendorfer   v.    Faber,    92 

1875;   Slawson  v.   Railroad   Co.,  U.    S.    347,    1875;   also    Roberts 

107  U.  S.  649,  1882;  Phillips  v.  v.     Bennett,    136    F.     R.     193, 

Detroit,    111    U.    S.    606,    1883;  1905. 

Specialty    Mfg.    Co.    v.    Fenton  21°Werk  v.  Parker,  231  F.  R. 

Mfg.  Co.,  174  U.  S.  497,  1899.  121,  1916. 


CHAP.    XVIII.]  ACTIONS   AT    LAW  571 

other  reason  than  aggregation,  the  prior  art  must  generally 
be  proved  in  order  to  support  the  second  defence;  and 
that  proof  will  generally  consist  of  one  or  more  prior 
patents  or  printed  publications.  The  method  of  intro- 
ducing them  in  evidence,  is  explained  in  the  next  two  sec- 
lions  where  substantial  identity  between  the  invention 
of  the  patent  in  suit  and  the  invention  disclosed  in  a  prior 
patent  or  printed  publication,  is  pre-supposed.  But  where 
a  prior  patent  or  printed  publication  is  set  up  to  negative 
invention,  rather  than  to  negative  novelty,  identity  may 
be  absent.  In  such  a  case,  the  question  is  whether  the 
difference  or  differences  between  the  subject  claimed  in 
the  patent  in  suit  and  the  prior  art,  amount  to  invention; 
and  it  is  generally  necessary  for  a  defendant  to  introduce 
expert  testimony  on  that  point,211  for  a  question  of  inven- 
tion is  a  question  of  fact.212  That  testimony  may  state 
the  character  and  the  results  of  experiments  made  with  the 
processes  or  articles  involved  in  the  comparison,  or  it  may 
be  based  on  knowledge  otherwise  acquired  by  the  expert 
who  testifies. 

For  the  purpose  of  determining  the  meaning  of  terms 
where  the  evidence  has  left  the  question  in  doubt,  it  has 
been  held  that  the  court  may  resort  to  dictionaries,  pub- 
lications, books  of  science,  etc.213  It  is  surmised  that  the 
decision  so  holding  is  not  so  construed  to  permit  the  court 
to  depart  from  the  rules  governing  the  doctrine  of  judicial 
notice. 

§  506.  The  third  defence,  and  the  facts  which  support  it, 
are  explained  at  large  in  the  third  chapter  of  this  book. 

211  Waterman  v.  Shipman,  55  1899;  Willis  v.  Miller,  121  F.  R. 
F.  R.  987,  1893.  985,  1903. 

212  Kisinger-Ison  Co.  v.  Brad-         See  Section  23. 

ford  Belting  Co.,  97  F.  R.  508,  213  Panzl  v.  Battle  Island  Paper, 

etc.,  Co.,  132  F.  R.  607,  1904. 


~)72  ACTIONS    a  l'    LAW  [CHAP.    XVIII. 

In  tliis  connection,  it  is  only  necessary  to  explain  the 
kinds  of  evidence  by  which  those  facts  may  be  proved,  and 
to  state  the  special  rules  which  govern  the  weight  of  such 
evidence. 

Where  novelty  is  duly  sought  to  be  negatived  by  prior 
United  States  patents,  duly  certified  copies  of  those  pat- 
ents are  admissible; 214  and  it  is  a  general  practice  among 
patent  lawyers  to  waive  the  certificate,  where  a  printed 
copy  from  the  Patent  Office  is  presented  by  opposing 
counsel.  This  practice  has  been  approved  and  such  copies 
held  competent  evidence  not  only  of  the  patent  itself  but 
of  the  date  when  the  application  was  filed,  when  no  ob- 
jection has  been  interposed  on  the  ground  of  incompe- 
tency.215 The  certified  copies  of  letters  patent,  which  are 
admissible  in  evidence,  include  not  only  such  individual 
copies  as  are  furnished  to  private  persons  on  payment  of 
the  proper  fees;  but  also  the  certified  bound  volumes  of 
copies  which  are  gratuitously  distributed  by  the  Com- 
missioner of  Patents  to  all  the  State  and  Territorial  Capi- 
tols, and  to  all  the  United  States  District  Court  clerks' 
offices,  except  those  which  are  located  at  the  capitals  of 
the  States  and  Territories.216 

Where  prior  foreign  patents  are  duly  pleaded  to  negative 
novelty,  they  may  be  proved  prima  facie,  by  duly  certified 
copies  of  those  copies  thereof,  which  are  kept  in  the  United 
States  Patent  Office.217  If  plenary  proof  of  foreign  letters 
patent  is  required,  it  can  be  made  by  producing  a  copy 
thereof,  duly  certified  by  that  officer  of  the  foreign  govern- 
ment which  issued  the  patent,  who  corresponds  to  the 

214  Revised  Statutes,  Section  216  Revised  Statutes,  Section 
892.                                                        490. 

215  Drawson  v.  Hartje  Paper  217  Revised  Statutes,  Section 
Co.,  131  F.  R.  734,  1904.  893. 

See  Section  129. 


CHAP.    XVIII. J  ACTIONS    AT    LAW  573 

Commissioner  of  Patents  in  the  United  States.218  Where 
an  error  creeps  into  a  certified  copy  of  any  letters  patent, 
it  may  be  corrected  by  another  and  more  carefully  com- 
pared certified  copy  from  the  same  office.219  Letters  pat- 
ent, to  be  admissible,  must  agree  in  name  and  date  with 
the  statements  in  the  pleadings,  in  proof  of  which  they  are 
offered.220 

§  507.  Prior  printed  publications  must  be  proved  by  the 
introduction  of  a  specimen  of  the  printed  thing,  which  is 
relied  upon,  and  by  satisfactory  evidence  that  it  was  pub- 
lished before  the  date  of  the  patent  in  suit.  Parol  testi- 
mony of  the  contents  of  such  printed  matter  is  generally 
inadmissible.221  The  testimony  of  a  person,  that  the 
printed  thing  produced  was  published  before  the  date  of 
the  invention  in  suit,  if  believed  by  the  jury,  would  be 
sufficient  evidence  on  that  point.  What  evidence  short 
of  that  in  convincing  force,  would  answer  the  purpose  in 
hand,  has  not  been  judicially  settled.  Printed  publica- 
tions are  not  generally  evidence  of  the  truth  of  the  state- 
ments which  they  contain.222  But  where  a  book  or  public 
periodical  appears  to  have  been  published  in  a  specified 
year,  or  on  a  specified  day,  and  where  it  contains  matter 
which  furnishes  collateral  evidence  of  the  genuineness 
of  the  date,  and  where  it  is  free  from  the  suspicion  of  hav- 
ing been  changed  after  it  was  put  forth,  it  will  be  received 
in  evidence,  without  direct  testimony  that  it  was  published 
when  it  purports  to  have  been.223  But  a  certificate  of 
the  Commissioner  of  Patents,  that  a  particular  book  was 

218  Schoerken  v.  Swift  &  Court-  221  McMahon  v.  Tyng,  14  Allen 
ney  &  Beecher  Co.,  7  F.  R.  469,      (Mass.),  167,  1867. 

1881.  222  Seymour  v.  McCormick,  19 

219  Brooks    v.   Jenkins,    3   Mc-      Howard,  106,  1856. 

Lean,  432,  1844.  223  Britton  p.  White  Mfg.  Co., 

•--'"  Bellas  p.  Hays,  5  Sergeant  &      61  F.  R.  95,  1894. 
Rawle  (Penn.),  427,  1819. 


574  ACTIONS     \ T    LAW  [CHAP.    XVIII. 

in  the  library  of  the  Patent  Office  us  early  as  a  particular 
date,  is  not  evidence  of  that  fact.'-1 

§  508.  Prior  knowledge  or  use  of  a  thing  patented,  may 
be  proved  by  the  testimony  of  the  person  or  persons  who 
had  such  prior  knowledge,  or  who  know  of  sucli  prior  use. 
Such  testimony  includes  three  points:  the  existence,  the 
character,  and  the  date  of  the  thing  previously  known  or 
used.  Where  a  witness  relies  wholly  on  his  memory  for 
all  three  of  these  points,  his  testimony,  though  admissible, 
is  not  strong.  It  is  generally  impossible  to  remember 
with  certainty  the  particular  construction  of  a  thing  of 
which  no  specimen  is  known  to  remain  in  existence;  and 
most  memories  are  nearly  unreliable  on  questions  of  dates. 
It  is  therefore  desirable  to  fortify  testimony  of  prior 
knowledge  or  use  by  producing  the  anticipating  thing,  or 
a  specimen  thereof,  and  by  connecting  the  history  of  that 
thing  with  events  about  which  there  is  no  room  for  doubt. 
Where  the  anticipating  thing  cannot  be  produced,  the 
testimony  which  supports  its  prior  existence,  may  still 
prevail,  if  the  construction  of  the  article  was  so  simple, 
and  so  well  understood,  as  to  be  unlikely  to  be  forgotten, 
and  especially  if  a  number  of  credible  witnesses  agree 
in  regard  to  its  character  and  its  date.225 

§  509.  Parol  evidence  of  an  anticipating  thing,  is  likely 
to  be  met  by  other  parol  evidence,  tending  to  show  that 
such  a  thing  never  existed  at  the  place  alleged;  or  that  it 
was  substantially  different  from  the  patented  invention 
sought  to  be  anticipated;  or  that  it  did  not  exist  at  the 
alleged  place  till  after  the  date  of  the  patented  invention. 
Testimony  of  the  first  sort  is  negative  in  its  character,  and 
therefore  not  so  weighty  as  the  affirmative  evidence  which 
it  contradicts.226    But  it  does  not  need  to  be  so  weighty, 

224  Travers  v.  Cordage  Co.,  64         225  See  Section  76. 
F.  R.  773,  1894.  2M  Union    Sugar    Refinery    v. 


CHAP.    XVIII.j  ACTIONS    AT    LAW  0/5 

in  order  to  overthrow  the  latter;  for  a  mere  preponderance 
of  evidence  will  not  sustain  the  defence  of  want  of  novelty. 
That  defence,  in  order  to  prevail,  must  be  proved  beyond 
a  reasonable  doubt.227  Testimony  of  an  anticipating  thing 
may  also  be  met  by  evidence  that  the  witness  purchased  a 
license  under  the  patent;  but  such  answering  evidence  is 
generally  entitled  to  very  little  weight,228  because  the 
witness  may  not  have  understood  that  the  facts  of  which 
he  knew,  constituted  a  legal  defence  to  the  patent,  or  he 
may  have  preferred  to  pay  for  a  license,  rather  than  to 
undergo  the  annoyance  and  incur  the  expense  which  are 
generally  incident  to  actions  for  infringement. 

§  510.  When  anticipating  matter  is  undeniably  proved 
to  have  existed  before  the  date  of  the  patent  in  suit,  want 
of  novelty  is  prima  facie  proved;  229  because  the  printed 
memorandum  of  the  date  of  the  application  for  the  patent, 
which  is  put  at  the  head  of  the  specification,  is  not  evidence 
of  that  date.230  But  the  plaintiff  may  meet  the  defend- 
ant's evidence  of  anticipating  matter  by  proof  that  he, 
or  his  assignor,  made  the  invention  at  a  still  earlier  date. 
He  may  sometimes  do  this  by  means  of  a  certified  copy 
of  the  specification  and  drawings  of  his  original  applica- 
tion; but  not  by  parol  evidence  relevant  to  the  time  when 
the  petition,  specification,  or  drawing  was  filed.231  If  his 
application  was  not  early  enough  for  the  purpose,  the 
plaintiff  may  prove  the  real  date  of  his  invention  by  prov- 
ing the  date  of  either  of  those  facts,  which,  in  the  chapter 
on  novelty,  were  shown  to   constitute  the  birth  of  an 

Matthiessen,  2  Fisher,  600,  1865.  230  International    Terra    Cotta 

F.  R.  773,  1894.  Co.   v.   Maurer,  44    F.   R.   619, 

227  Section  76  of  this  book.  1890. 

228  Evans  v.  Eaton,  3  Wheaton,  See  Section  506. 

454,  1818.  231  Wayne   v.    Winter,    6    Mc- 

229  Havemeyer   v.    Randall,   21      Lean,  344,  1855. 
F.  R.  404,  18S4. 


.")7(i  ACTIONS    AT    LAW  [CHAP.    XVIII. 

invention  thereafter  patented.282  If  that  fact  was  a  tan- 
gible tiling,  its  establishment  requires  the  production  and 
proof  of  that  thing,  or  requires  proof  of  its  loss  or  de- 
struction, and  the  best  obtainable  evidence  of  what  its 
character  was.233  But  declarations  of  the  patentee  relat- 
ing to  his  invention,  accompanied  by  descriptions  thereof, 
and  made  before  the  application  was  filed,  are  competent 
evidence  for  the  purpose  in  question  on  the  principle  of 
res  gestae.234 

After  the  plaintiff  has  introduced  evidence  that  he,  or 
his  assignor,  made  the  invention  at  a  still  earlier  date  than 
that  proved  for  the  anticipating  matter;  the  defendant 
cannot  introduce  evidence  to  carry  the  date  of  the  an- 
ticipating matter  back  of  the  new  date  thus  proved  by 
the  plaintiff;  but  the  defendant  may  introduce  evidence 
to  disprove,  if  he  can,  the  plaintiff's  new  date  of  inven- 
tion.235 

§  511.  The  fourth  defence  requires  evidence  that  the 
patented  invention  will  not  perform  any  function  which 
is  ascribed  to  it  in  the  letters  patent,236  or  proof  that  its 
function  is  not  a  useful  one,  within  the  meaning  of  the  law 
on  that  subject.237 

The  first  of  these  sorts  of  proof  may  consist  of  testi- 
mony of  a  person  who  is  skillful  in  the  art  to  which  the 
invention  pertains,  and  who  has  endeavored,  in  good  faith, 
to  make  the  patented  thing  work,  and  has  been  unable 
to  do  so.    In  plain  cases,  it  may  also  consist  of  the  testi- 

232  Section  70;  Consolidated  Ry.,      v.  Crocker- Wheeler  Co.,  141  F.  R. 
etc.,  Co.  v.  Adams  &  Westlake      101,  1905. 

Co.,  161  F.  R.  343,  1908.  235  St.    Paul    Plow    Works    v. 

233  Richardson     v.     Hicks,      1  Starling,  140  U.  S.  198,  1891. 
McArthur's   Patent   Cases,   336,  236  Rowe  v.  Blanchard,  18  Wis- 
1854.  consin,  462,  1864. 

234  Bullock   Electric   Mfg.    Co.  237  Sections   82   to   84   of   this 

book. 


CHAP.    XVIII.]  ACTIONS    AT    LAW  577 

mony  of  such  a  person,  who  has  not  actually  experimented 
with  a  specimen  of  the  patented  thing,  but  who  is  able  to 
show  theoretically,  that  it  is  impossible  for  such  a  speci- 
men to  operate.238  And  in  all  cases  the  evidence  must  show 
a  total  incapacity  in  the  invention  to  do  anything  claimed 
for  it,  because  neither  imperfect  operation,  nor  a  total 
failure  to  perform  part  of  the  claimed  functions,  will 
sustain  a  defence  of  want  of  utility.239  And  either  practical 
or  theoretical  evidence  of  want  of  utility  in  the  sense  now 
under  consideration,  may  be  overthrown  by  the  testi- 
mony of  a  person  who  has  succeeded  in  causing  the  pat- 
ented process  or  thing  to  produce  a  result  ascribed  to  it 
in  the  patent. 

The  second  of  these  sorts  of  proof  may  consist  of  evi- 
dence that  the  function  of  the  patented  thing  is  one  which 
people  generally  profess  to  condemn  as  dangerous  or  im- 
moral. Conventional  and  not  absolute  ethics  is  the  crite- 
rion of  judgment  on  this  point. 

§  512.  The  fifth  defence  may  be  supported  by  any  com- 
petent evidence  which  shows  that  the  inventor  relinquished 
all  expectation  to  secure  a  patent,  and  formed  an  expecta- 
tion that  the  invention  would  always  be  free  to  the  pub- 
lic.240 Such  evidence  may  be  either  direct  or  circumstan- 
tial, but  a  mere  preponderance  of  evidence  cannot  sustain 
this  defence  of  actual  abandonment,  because  it  is  one  of 
those  which,  in  order  to  prevail,  must  be  proved  beyond  a 
reasonable  doubt.241 

§  513.  The  sixth  defence  requires  proof  that  the  inventor 

238  Campbell  Printing-Press  Co.  239  Seymour  v.  Marsh,  6  Fisher, 

v.  Duplex  Printing-Press  Co.,  86      115,  1872. 

F.  R.  330,  1898;  Crown  Cork  &  24°  Babcock  v.  Degener,  1  Mc- 
Seal  Co.  v.  Aluminum  Stopper  Arthur's  Patent  Cases,  616,  1859. 
Co.,  108  F.  R.  849,  1901.  2"  McCormick  v.   Seymour,   2 

Blatch.  256,  1851. 


578  ACTIONS    AT    LAW  [CHAP.    Will. 

omitted  to  apply  for  the  patent,  during  the  time  allowed 
by  the  statutes  for  such  an  application  to  be  made,  in  his 
particular  case.242  That  proof,  to  be  effective,  must  es- 
tablish the  fact  beyond  a  reasonable  doubt.2'" 

§  514.  The  seventh  defence  requires  the  introduction  of 
the  original  application  papers,  or  certified  copies  thereof; 
and  in  all  except  very  plain  cases  it  requires  the  testimony 
of  experts  to  explain  the  outward  embodiment  of  the 
terms  contained  in  the  original  letters  patent,  and  in  the 
original  application  respectively.244 

§  515.  The  eighth  defence  calls  for  evidence  that  an- 
other than  the  patentee  conceived  the  invention  before 
he  did;  and  that  the  other  used  reasonable  diligence  in 
adapting  and  perfecting  the  same;  and  that  the  patentee 
knew  of  that  prior  conception,  and  obtained  the  patent 
surreptitiously;  or,  if  he  did  not  know  of  the  prior  concep- 
tion, that  he  obtained  the  patent  unjustly,  by  applying 
for  it  when  the  prior  conceivor  was  not  chargeable  with 
laches  in  reducing  the  invention  to  practice,  or  in  pre- 
paring and  filing  an  application  for  a  patent  thereon.245 

§  516.  The  ninth  defence  requires  proof  that  another 
than  the  patentee  was  joint  inventor  with  him  of  the 
thing  covered  by  the  patent.  Testimony  on  this  point 
must  be  strong  in  order  to  prevail,  because  the  tendency 
of  courts  and  juries  is  to  assign  such  evidence  to  the  cate- 
gory of  mechanical  assistance  in  construction,  or  to  that  of 
suggested  substitution  of  equivalents.246 

242  Andrews  v.  Hovey,  123  U.  S.  692;  Yates  v.  Huson,  8  App.  D.  C. 
267,  124  U.  S.  694,  1887.  93,  1896. 

243  Hanifen  v.  Godshalk,  78  246  Agawam  Co.  v.  Jordan,  7 
F.  R.  816,  1896.  Wallace,  587,  1868;  Pitts  v.  Hall, 

244  Bischoff  v.  Wethered,  9  Wal-  2  Blatch.  229,  1851;  Locke  v. 
lace,  812,  1869.  Lane  Co.,  35  F.  R.  293,   1888; 

245  Revised  Statutes,  Section  Hall  Signal  Co.  v.  Union  Switch  & 
4920,   as   amended,    29   Statute,  Signal  Co.,  115  F.  R.  643,  1901. 


CHAP.    XVIII.]  ACTIONS   AT    LAW  579 

§  517.  The  tenth  defence  is  more  likely  to  be  successful 
in  the  proof  than  the  ninth;  because  it  may  not  only  be 
based  on  the  counterpart  of  the  circumstances  which 
underlie  the  latter,  but  also  on  other  circumstances,  where 
those  do  not  exist.  It  has  sometimes  happened  that  an 
inventor,  having  sold  an  undivided  half  interest  in  his 
invention,  has  joined  with  his  vendee  in  applying  as  joint 
inventor  for  a  patent  therefor.  Such  errors  have  been 
known  to  result  from  ignorance  of  the  law;  and  such  an 
error  has  been  said  to  have  occurred  in  one  case  on  ac- 
count of  a  desire  to  give  an  important  patent  the  benefit 
of  the  name  of  a  more  distinguished  scientist  than  him 
who  was  the  real  producer  of  the  subject  of  the  claim. 
But  in  any  case,  it  is  certain  that  very  clear  and  unequivo- 
cal evidence  is  necessary  to  support  this  defence.247 

§  518.  The  eleventh  defence  calls  for  proof  that  the 
letters  patent  contain  less  than  the  whole  truth  relevant 
to  the  invention,  or  that  it  contains  more  than  is  neces- 
sary to  produce  the  desired  result,  and  that  the  fault  arose 
from  intention  to  deceive  the  public.  But  positive  and 
direct  evidence  is  not  required  on  the  latter  point.  It  is 
sufficiently  shown  by  proof  of  any  circumstances  which 
satisfy  the  jury  that  such  intention  existed.248  The  in- 
tent, however,  is  the  gist  of  this  defence  and  even  though 
the  patent  may  appear  to  be  deceptive  in  fact,  the  de- 
fence is  not  sustained  unless  the  intent  is  shown.  The 
prima  facie  showing  of  intent  may  be  rebutted  by  any 
competent  evidence  that  tends  to  disprove  it,  as  for  in- 

247  Gottfried  v.  Brewing  Co.,  5  Welsbach  Light  Co.  v.  Cosmopoli- 

Bann.  &  Ard.  4,  1879;  Butler  v.  tan  Gaslight  Co.,  100  F.  R.  650, 

Bainbridge,  29  F.  R.  142,  1886;  1900. 

Consolidated    Apparatus    Co.    v.  248  Gray  v.  James,  1  Peters'  Cir- 

Woerle,    29    F.    R.    449,    1887;  cuit  Court   Reports,  394,    1817; 

Schlicht  &  Field  Co.   v.   Sewing  Dyson  v.  Danforth,  4  Fisher,  133, 

Machine  Co.,  36  F.  R.  585,  1888;  1865. 


.~>S()  ACTIONS    AT    LAW  [CHAP.    Will. 

stance  public  disclosures  by  the  inventor  at  the  time  of 
issuance  of  the  patent  of  the  matters  that  on  the  face  of 
the  patent  might  appear  to  have  been  withheld.249 

§  519.  The  twelfth  defence  can  be  supported  by  no 
evidence  except  that  of  persons  skilled  in  the  art  to  which 
the  invention  pertains,  or  with  which  it  is  most  nearly 
connected.  A  patent  for  a  chemical  composition  or  proc- 
ess cannot  be  overthrown,  on  the  ground  of  an  insufficient 
description,  by  the  testimony  of  a  mechanical  expert; 
nor  can  a  patent  for  an  improvement  of  a  loom  be  over- 
thrown on  that  ground,  by  the  testimony  of  a  machinist 
skilled  only  in  printing-presses.  If  a  description  is  suf- 
ficiently full,  clear,  concise,  and  exact  to  be  effectually 
understood  by  any  person  skilled  in  that  kind  of  machin- 
ery, or  other  subject  of  a  patent,  it  is  sufficiently  so  to 
meet  this  defence.250 

§  520.  The  thirteenth  defence  may  sometimes  succeed 
without  any  evidence  outside  of  the  letters  patent  them- 
selves. It  will,  however,  always  be  prudent  to  fortify 
the  defence  by  the  testimony  of  an  expert  who  can  show 
that  the  outward  embodiment  of  the  terms  of  the  claim, 
is  uncertain  in  character  or  in  extent. 

§  521.  The  fourteenth  defence  requires  several  items  of 
evidence  for  its  support.  It  requires  proof  that  one  or 
more  of  the  claims  of  the  patent  are  void  for  want  of  em- 
bodying a  subject-matter  of  a  patent,251  or  for  want  of 
invention,  or  for  want  of  novelty ;  252  and  that  the  patentee 
has  long  known  the  facts  which  make  it  invalid  in  that 
behalf.  No  disclaimer  is  ever  necessary,  in  the  absence 
of  all  of  the  first  three  of  these  circumstances;  and  no 

249  Malignani  v.  Jasper  Marsh,  2M  O'Reilly  v.  Morse,  15  How- 
etc,  Co.,  180  F.  R.  442,  1910.  ard,  121,  1853. 

250  Loom  Co.  v.  Higgins,  105  252  Revised  Statutes,  Section 
U.  S.  580,  1881.  4922. 


CHAP.    XVIII.]  ACTIONS   AT    LAW  581 

delay  to  file  one  is  unreasonable  in  the  absence  of  the 
fourth.  Indeed,  proof  of  a  necessity  for  a  disclaimer, 
and  of  long-existing  knowledge  of  the  facts  out  of  which 
that  necessity  arose,  will  not  always  sustain  this  defence; 
because  delay  to  file  a  disclaimer  is  not  unreasonable,  so 
long  as  there  is  any  reasonable  doubt  whether  the  known 
facts  constitute  a  necessity  for  such  a  document.253 

§  522.  The  fifteenth  defence  can  seldom  be  supported 
by  evidence  that  the  original  patent  was  neither  inopera- 
tive nor  invalid  by  reason  of  a  defective  or  insufficient 
specification;  because  inoperativeness,  from  one  of  these 
causes,  exists  whenever  the  patent  does  not  secure  and 
cover  all  the  inventions  which  it  indicated,  suggested,  or 
described,  and  which  might  lawfully  have  been  claimed 
in  it; 254  and  because,  when  not  granted  on  account  of  such 
inoperativeness,  reissues  are  generally  granted  on  account 
of  invalidity  which  arose  by  reason  of  a  defective  or  insuf- 
ficient specification,  or  by  reason  of  a  too  extensive 
claim.255  This  defence  therefore  generally  requires  to  be 
sustained  by  evidence  showing  that,  whatever  inoperative- 
ness or  invalidity  on  account  of  defective  or  insufficient 
specification,  or  on  account  of  too  extensive  claims,  is  to 
be  found  in  the  original  patent,  the  error  arose  otherwise 
than  by  inadvertence,  accident,  or  mistake.  The  absence 
of  all  three  of  these  mishaps  from  the  history  of  the  prepa- 
ration of  any  original  specification,  may  be  proved  by 
evidence  which  shows  that  the  statements  or  claims  al- 
leged to  have  been  omitted  in  one  or  another  of  these  ways, 
were  in  fact  omitted  with  deliberation  or  with  care,  or 
were  omitted  because- they  had  to  be,  in  order  to  secure 

253  Silsby  v.  Foote,  20  Howard,  254  Wilson  v.  Coon,  18  Blatch. 

290, 1857;  Matthews  v.  Flower,  25      532,  1880. 

F.  R.  834,  1885.  255  Revised    Statutes,    Section 

4916. 


582  ACTIONS    \T    LAW  [CHAP.    will. 

the  original  patent,266  or  were  disclaimed  in  order  to  secure 
an  extension  thereof.'2"  Evidence  to  show  cither  of  the 
last  two  of  these  circumstances,  if  it  exists  at  all,  may 
generally  be  found  among  the  correspondence  on  file  in 
the  Patent  Office,  and  may  be  introduced  in  the  form  of 
certified  copies  of  the  letters  which  contain  it.288 

§  523.  The  sixteenth  defence  can  be  supported  by  the 
introduction  of  the  original  patent,  if  when  it  is  compared 
with  the  reissue,  the  latter  appears  to  claim  something 
which  the  original  did  not,  and  appears  to  have  been 
applied  for  a  long  time  after  the  original  was  granted. 
How  long  this  space  of  time  must  be,  in  order  to  sustain 
this  defence,  depends  largely  upon  the  particular  circum- 
stances of  particular  cases.  Different  spaces  of  time  which 
have  been  held  to  be  sufficient  for  the  purpose,  are  collated 
in  the  chapter  on  reissues,259  and  the  burden  is  on  the 
plaintiff  to  excuse  delay  for  more  than  two  years.260 

§  524.  The  seventeenth  defence  always  requires  to  be 
supported  by  the  introduction  of  the  original  patent,261 
and  generally  requires  expert  testimony  showing  that  the 
outward  embodiment  of  something  claimed  in  the  reissue, 
is  substantially  different  from  anything  described  in  the 
original  patent  and  apparently  intended  to  be  claimed 
therein.  The  judge  will  not  reject  such  expert  testimony, 
unless  the  case  is  so  clear  that  he  would  have  decided  the 
question  on  a  demurrer,  if  it  had  been  presented  to  him 
by  that  pleading. 

286  James  v.  Campbell,  104  U.  S.  258  Revised    Statutes,     Section 

356,  1881;  Yale  Lock  Co.  v.  Berk-  892. 

shire  Bank,  135  TJ.  S.  379,  1890;  259  See  Section  227. 

Dobson  v.  Lees,   137  U.  S.  265,  2MWollensak    v.    Reilier,     115 

1890.  U.  S.  101,  1884;  Hoskin  v.  Fisher, 

257  Leggett  v.  Avery,  101  U.  S.  125  U.  S.  222,  1887. 

256,  1879.  261  Seymour  v.  Osborne,  11  Wal- 
lace, 516,  1870. 


CHAP.    XVIII.]  ACTIONS    AT    LAW  ">N.'i 

§  525.  The  eighteenth  defence  requires  the  introduction 
in  evidence  of  the  prior  patent,  granted  on  the  application 
of  the  same  inventor;  but  it  will  seldom  require  expert 
testimony,  because,  in  order  to  prevail  at  all,  this  defence 
requires  the  claim  of  the  prior  patent  to  be  so  clearly  co- 
extensive with  the  claim  of  the  patent  in  suit,  that  its  co- 
extensiveness  is  apparent  upon  the  faces  of  the  two  pat- 
ents. But  expert  testimony  may  be  necessary  to  show 
such  substantial  identity  of  claims,  where  one  or  both  of 
the  claims  may  be  formulated  in  phraseology,  which  can- 
not be  understood  without  expert  explanation. 

§  526.  The  nineteenth  defence  would  require  to  be  sup- 
ported by  the  introduction  of  an  officially  attested  copy  of 
the  record  of  the  court  repealing  the  patent,262  or  if  that 
record  is  proved  to  have  been  destroyed  by  fire,263  or 
rendered  illegible  by  wear  or  time,264  and  not  restored  by 
the  court  to  which  it  pertains,265  it  may  be  proved  by  a 
witness  who  examined  and  copied  it  when  it  was  still 
unharmed.266  But  parol  evidence  will  not  be  admitted 
of  a  record  of  which  only  a  part  is  lost.  The  part  which 
still  exists,  must  be  produced  or  proved  by  an  officially 
attested  copy.267 

§  527.  The  twentieth  defence  calls  for  the  introduction 
in  evidence,  of  a  properly  certified  copy  of  the  foreign 
patent  which  is  relied  upon  to  curtail  the  term  of  the  pat- 
ent in  suit ;  and  if  the  parties  offer  no  testimony  to  aid  the 
court  in  determining  whether  the  foreign  patent,  so  proved, 
is  for  the  same  invention  as  the  United  States  patent  upon 

282  Revised  Statutes,  Section  265  Revised  Statutes,  Sections 
905.  899  and  900. 

283  United  States  v.  Delespine's  2M  1  Wharton  on  Evidence, 
Heirs,  12  Peters,  654,  1838.  135. 

284  Little  v.  Downing,  37  New  287  Nims  v.  Johnson,  7  Cali- 
Hampshire,  355,  1858.  fornia,  110,  1857. 


58  I  ACTIONS   AT   LAW  [chap.    XVIII. 

which  the  action  is  based,  then  the  court  will  determine 
that  point  from  an  inspection  of  the  two  documents.268 

But  if  expert  evidence  on  that  subject  is  offered,  it  will 
doubtless  be  received. L>r,°  And  a  foreign  patent  is  evidence 
of  its  own  duration;  and  will  be  held  not  to  have  been 
extended,  in  the  absence  of  evidence  that  it  has  been.270 

§  528.  The  twenty-first  defence  is  supported  by  proof 
that  the  plaintiff  has  made  or  sold  one  or  more  specimens 
of  the  patented  article  without  marking  it  " patented," 
together  with  the  day  and  year  whereon  the  patent  was 
granted.271  When  such  evidence  is  introduced,  the  burden 
is  shifted  to  the  plaintiff,  if  an  accounting  is  prayed,  to 
show  that  before  suit  was  brought  the  defendant  was  duly 
notified  that  he  was  infringing  the  patent,  and  that  he 
continued  to  infringe  after  such  notice.272  A  voluntary 
statement  made  to  the  infringer  by  a  third  person,  that  his 
doings  infringe  a  patent,  is  not  such  a  notice  of  infringe- 
ment as  is  contemplated  by  the  statute; 273  but  such  a 
notice  does  reside  in  the  beginning  of  a  suit  for  infringe- 
ment.274 

The  twenty-first  defence  does  not  apply  to  any  patent 
for  a  process;  because  processes  are  not  made  or  sold. 
They  are  only  used,  and  the  statute  on  this  subject  is 
expressly  confined  to  cases  of  making  or  to  cases  of  selling 
without  marking  " patented."275 

268  De  Florez  v.   Reynolds,    17  272  Goodyear  v.  Allyn,  6  Blatch. 

Blatch.  439, 1880.  36,  1868. 

2«9  Bischoff  v.  Wethered,  9  Wal-  273  Pairpoint  Mfg.  Co.  v.  Eld- 
lace,  812,  1869.  ridge  Co.,  71  F.  R.  309,  1896. 

270  Edison  Electric  Light  Co.  v.  274  United  States  Mitis  Co.  v. 
Electric  Supply  Co.,  60  F.  R.  404,  Carnegie  Steel  Co.,  89  F.  R.  206, 
1890;    Bonsack    Mach.    Co.    v.  1898. 

Smith,  70  F.  R.  383,  1895.  275  United  States  Mitis  Co.  v. 

271  Revised  Statutes,  Section  Carnegie  Steel  Co.,  89  F.  R.  206, 
4900.  1898. 


CHAP.    XVIII.]  ACTIONS    AT    LAW  585 

§  529.  The  twenty-second  defence  may  sometimes  be 
sustained  by  means  of  pointing  out  faults  in  the  plaintiff's 
proof  of  title.  Where  that  proof  is  apparently  complete, 
it  can  be  attacked  by  the  introduction  of  assignments  or 
grants  in  writing,  which  intervene  between  some  of  the 
links  of  the  plaintiff's  chain  of  title  in  such  a  way  as  to 
destroy  or  impair  its  continuity.  The  numerous  points 
of  law  relevant  to  title  are  explained  in  the  eleventh  chap- 
ter of  this  book.  It  is  enough  to  say,  in  this  connecton,  that 
no  title  will  be  recognized  in  a  court  of  law,  unless  it  is 
evidenced  by  instruments  in  writing.276 

§  530.  The  twenty-third  defence  may  be  sustained  by 
evidence  of  a  written  or  a  parol  license,  or  of  an  express 
or  an  implied  license.  And  a  license  may  be  a  defence  to 
an  infringement  suit,  even  where  the  license  fee  is  in 
arrears.277  Licenses  form  the  subject  of  the  twelfth  chapter 
of  this  book,  and  to  that  chapter  recourse  may  be  had  for 
further  information  in  regard  to  the  proper  evidence  to 
support  this  defence. 

§  531.  The  twenty-fourth  defence  may  be  sustained  by 
proof  of  a  total  or  partial  release,  given  after  the  infringe- 
ment was  committed  and  before  the  action  was  com- 
menced, or  it  may  be  sustained  pro  tanto  by  a  partial  re- 
lease given  even  after  the  action  was  begun.278  A  paper 
cannot  be  a  release,  if  executed  before  the  infringement 
to  which  it  refers  was  committed,  because  no  man  can 
relinquish  what  he  does  not  possess. 

Whether  a  lease,  given  only  to  a  joint  infringer  with  the 
defendant,  can  be  invoked  by  the  defendant  himself,  is  a 
question  to  which  no  categorical  answer  can  at  present 

276  Revised     Statutes,     Section         '-"  Keyes   v.   Mining   Co.,    158 
4898,    as     amended     29     Stat.      U.  S.  150,  1895. 
692.  278Burdell  v.   Denig,  92  U.  S. 

721,  1875. 


586  ACTIONS    AT    LAW  [chap.    Will. 

be  given.  It  depends  upon  the  question  whether  contribu- 
tion can  be  enforced  between  infringers,  and  that  point 
has  never  been  settled  by  the  courts.  Nothing  more  use- 
ful can  therefore  be  said  in  this  connection,  than  to  stale 
the  principles  upon  which  the  two  questions  seem  to  de- 
pend. 

The  doctrine  that  there  can  be  no  contribution  between 
tort-feasors,  does  not  generally  apply  to  cases  where  the 
wrongdoers  suppose  their  doings  to  be  lawful.279  This 
is  generally  true  of  infringers  of  patents.  When  they 
infringe,  they  are  perhaps  ignorant  of  the  patents  which 
they  violate;  or  if  they  know  of  the  patents,  they  are  apt 
to  give  themselves  the  benefit  of  every  suggested  ground 
for  doubt,  and  thus  suppose  that  their  doings  do  not  con- 
stitute any  infringement.  Therefore,  it  seems  to  be  gen- 
erally true,  that  where  one  of  several  joint  infringers  is 
sued  alone,  and  suffers  and  pays  a  judgment  for  the  joint 
infringement,  he  may  compel  his  co-infringers  to  contrib- 
ute their  due  portion  of  that  payment,  by  means  of  an 
action  to  enforce  its  refunding.  That  being  so,  it  will 
follow  that  a  release  to  one  joint  infringer  will  operate  to 
release  all  his  co-infringers  from  the  claim  of  the  patentee. 
Where  contribution  can  be  enforced  between  tort-feasors, 
a  full  release  to  one  must  release  all;  for  if  it  did  not  do  so, 
it  would  not  fully  release  that  one.  The  releasee  would 
not  be  fully  protected  by  his  release,  unless  his  co-infringers 
would  also  be  protected  by  it;  because  otherwise  the  re- 
leasee would  still  be  liable  to  an  action  for  contribution, 
brought  against  him  by  a  joint  tort-feasor  who  had  been 
compelled  to  respond  in  damages  for  the  joint  infringe- 
ment. The  true  rule,  therefore,  appears  to  be  that  a  plain 
release  given  to  either  of  several  joint  infringers  may 
be  successfully  invoked  in  a  court  of  law,  not  only  by 
279  Bailey  v.  Bussing,  28  Connecticut,  461,  1859. 


CHAP.    XVIII.]  ACTIONS    AT    LAW  587 

the  nominal  releasee,  but  also  by  any  or  all  of  his  co- 
infringers. 

A  release  given  to  an  infringer,  by  one  of  several  owners 
in  common  of  a  patent  right,  is  not  a  defence  to  an  action 
of  the  other  owners  against  the  infringer;  28°  and  those 
other  owners  will  be  permitted  to  prosecute  their  rights, 
by  making  the  releasing  co-owner  a  co-plaintiff  against 
his  will,  if  that  is  necessary  in  a  particular  jurisdiction. 
In  a  suit  thus  prosecuted,  the  release  will  be  a  defence  to 
the  damages  due  to  the  releasing  co-owner,  but  not  to 
those  due  to  the  others. 

§  532.  The  twenty-fifth  defence  may  be  successful 
without  any  evidence,  because  the  burden  of  proof  is 
upon  a  plaintiff  to  show  an  infringement,281  and  because 
a  plaintiff  may  fail  to  sustain  that  burden.  Accordingly, 
in  one  leading  law  case,  the  defendant  was  the  prevailing 
party  on  the  circuit,  and  in  the  Supreme  Court,  though 
the  plow  which  he  made  was  nearly  identical  with  that 
covered  by  the  plaintiff's  patent,  and  though  the  defend- 
ant introduced  no  evidence  on  the  subject  of  infringe- 
ment, nor  indeed  on  any  other.282  So,  also,  in  a  leading 
case  in  equity,  the  defendant,  though  beaten  on  the  cir- 
cuit, successfully  interposed  the  defence  of  non-infringe- 
ment in  the  Supreme  Court,  without  any  evidence  on  that 
side  of  the  issue,  and  against  the  contrary  testimony  of 
several  experts.283  Several  cases  have  also  been  success- 
fully defended  in  Circuit  Courts,  on  the  ground  of  non- 
infringement, without  any  expert  testimony  on  that  side 

-"Lalance    &    Grosjean    Mfg.  Co.  v.  Brennan,   118  F.  R.   14G. 

Co.  v.  Haberman  Mfg.  Co.,  93  1902. 

F.  R.  198,  1899.  282  Prouty  v.  Ruggles,  16  Peters, 

281  Brooks  v.  Jenkins,  3  McLean,  336,  1842. 

453,  1844;  Royer  v.  Mfg.  Co.,  20  283  Railway   Co.   v.   Sayles,   97 

F.  R.  853,  1884;  Dowagiac  Mfg.  U.  S.  554,  1878. 


588  ACTIONS   A.T   LAW  [chap,    xyiii. 

of  that  issue,283"  and  against  regular  expert  depositions 

asserting  and  arguing  the  proposition  of  infringement.284 
Rut  where  a  thing  made  or  used  or  sold  by  the  defend- 
ant is  proved  or  is  stipulated,  and  where  a  competent 
expert  testifies  that  it  is  substantially  the  same  as  that 
which  appears  to  be  covered  by  the  patent  in  suit,  it  is 
generally  advisable,  and  sometimes  necessary,  for  the  de- 
fendant to  introduce  evidence  tending  to  show  non-in- 
fringement, if  he  means  to  rely  upon  that  defence.285 
Evidence  of  this  sort  may  consist  of  the  testimony  of 
experts  who  are  acquainted  with  the  letters  patent  in  suit, 
and  with  the  doings  of  the  defendant,  and  are  of  opinion 
that  those  doings  are  substantially  different  from  every- 
thing which  appears  to  be  secured  by  the  letters  patent, 
and  can  give  an  intelligent  reason  for  that  opinion.  Rut 
such  testimony  must  describe  the  defendant's  doings, 
to  enable  the  court  to  judge  the  correctness  of  its  com- 
parisons.286 This  testimony,  like  other  testimony  of 
experts  on  questions  of  infringement,  is  necessarily  based 
on  hypothetical  constructions  of  the  patents  in  suit,  and 
is  therefore  to  be  disregarded,  if  the  judge  finds  those 
hypothetical  constructions  to  be  substantially  erroneous. 
When  a  plaintiff  has  made  a  pri??ia  facie  case  of  infringe- 
ment of  a  process  patent  the  defendant  may  find  himself 
in  the  seeming  predicament  of  being  obliged  to  disclose 
his  secret  process  in  order  to  offset  the  plaintiff's  showing. 
The  practical  necessity  for  this  of  course  will  depend  upon 
the  strength  of  plaintiff's  showing,  but  in  any  event  the 
defendant  will  not  be  compelled  to  disclose  his  secret 

283<l  See  Section  189.  285  Bennet  v.  Fowler,  8  Wallace, 

284  Enterprise  Co.  v.  Snow,  72  447,  1869. 

F.  R.  263,  1896;  80  F.  R.  537,  28«  Goldie  v.  Iron  Co.,  64  F.  R. 

1897;  Beale  v.  Spate,  74  F.   R.  240,  1894. 
869,  1896. 


CHAP.    XVIII.]  ACTIONS   AT    LAW  589 

process,  as  he  may  show  by  affirmative  proof  that  some 
one  or  more  steps  of  the  patented  process  has  not  been 
followed  by  him.287 

Whether  the  fact  that  the  defendant  conformed  his 
doings  to  a  junior  patent,  is  admissible  as  tending  to  show 
non-infringement  of  the  patent  in  suit,  is  a  question  which 
the  Supreme  Court  once  decided  in  the  affirmative,288 
and  afterward  in  the  negative,289  but  finally  in  the  affirma- 
tive.290 The  lower  courts  have  uniformly  followed  the 
last  of  these  decisions,  ever  since  it  was  rendered  in  1895; 
so  that  now  the  law  of  the  point  appears  to  be  established 
and  confirmed.291 

§  533.  The  twenty-sixth  defence  requires  to  be  proved 
as  pleaded.  Where  it  depends  upon  estoppel  in  pais, 
it  may  be  proved  by  parol,  or  by  the  production  of  docu- 
ments, according  as  the  ground  of  the  estoppel  consists 
of  things  done,  or  words  spoken,  or  consists  of  words  which 
were  committed  to  writing.  Where  the  defence  depends 
upon  estoppel  by  deed,  the  document  must  be  produced 
or  otherwise  proved  according  to  the  rules  of  evidence 
applicable  to  such  cases;  and  where  it  depends  upon  estop- 
pel by  record,  or  res  judicata,  the  record  must  be  proved 
in  accordance  with  the  laws  governing  such  evidence. 

287  Philadelphia  Rubber  Works  149,  1895;  New  Departure  Bell 
Co.  v.  United  States  Rubber  Re-  Co.  v.  Hardware  Specialty  Co., 
claiming  Works,  225  F.  R.  789,  69  F.  R.  156,  1895;  Ney  v.  Ney 
1915  (affirmed  229  F.  R.  150,  Mfg.  Co.,  69  F.  R.  407,  1895; 
1915).  Illinois  Steel  Co.  v.  Kilmer  Mfg. 

288  Corning  v.  Burden,  15  How-  Co.,  70  F.  R.  1015,  1895;  Wolff 
ard,  252,  1853.  v.    Du    Pont,    122    F.    R.    959, 

289Blanchard     v.     Putnam,     8  1903. 
Wallace,  420,  1869.  For  a  more  complete  discussion 

290  Boyd  v.  Janesville  Ha}'  Tool  of  this  question  and  of  the  dis- 

Co.,  158  U.  S.  261,  1895.  tinctions    involved,    see    Section 

M1Ransome  v.  Hyatt,  69  F.  R.  362«. 


590  ACTIONS    AT    LAW  [CHAP.    Will. 

But  if  the  record,  when  proved,  stops  short  of  showing 
that  the  point  in  question  whs  decided  in  (lie  former  case, 
that  fact  may  be  proved  by  extrinsic  evidence.292 

§  534.  The  twenty-seventh  defence  seldom  requires 
any  evidence  to  sustain  it,  because  the  Federal  courts 
take  judicial  notice  of  the  statutes  of  limitation;  J!,!  and 
because  the  plaintiff's  pleadings  and  proofs,  when  taken 
t  ( >gether,  will  generally  show  when  the  infringement  sued 
upon  was  committed.  But  if  the  plaintiff's  presentation 
of  the  case  leaves  the  latter  point  uncertain  to  such  an 
extent  as  to  affect  the  question  of  the  operation  of  a  stat- 
ute of  limitation,  the  burden  is  then  cast  upon  the  defend- 
ant to  prove  that  part  or  all  of  the  infringement  is  old 
enough  to  be  barred  by  the  statute  which  he  pleaded.294 

§  534a.  The  twenty-eighth  defence  would  generally 
require  the  production  of  the  record  of  the  patent  applica- 
tion, together  with  proof  of  whatever  acts  of  the  commis- 
sioner are  relied  upon  as  being  illegal. 

§  535.  Testimony  in  actions  at  law  for  infringements 
of  patents  may  always  be  taken  orally  in  open  court.  It 
may  also  be  taken  by  depositions  in  writing,  where  the 
witness  lives  more  than  one  hundred  miles  from  the  place 
of  trial,  or  when  he  is  bound  on  a  voyage  at  sea,  or  is  about 
to  go  out  of  the  United  States  and  out  of  the  judicial  dis-- 
trict  in  which  the  case  is  to  be  tried,  or  to  a  greater  dis- 
tance than  one  hundred  miles  from  the  place  of  trial,  before 
the  time  of  trial,  or  when  he  is  ancient  and  infirm.  The 
sorts  of  magistrates  before  whom  such  a  deposition  may 
be  taken  are  judges  of  any  United  States  court;  judges 

202  Southern  Pacific  Co.  v.  Earl,  v.  Wilson,  9  Wallace,  121, 
82  F.  R.  693,  1897.  1869. 

293  Pennington    v.    Gibson,    16  See  Sections  435  and  579. 

Howard,      79,      1853;     Cheever  294  Russell  v.  Barney,  6  McLean, 

577,  1855. 


CHAP.    XVIII.]  ACTIONS    AT    LAW  591 

of  any  supreme,  superior,  or  county  court,  or  court  of 
common  pleas  in  any  of  the  United  States;  commissioners 
of  United  States  circuit  courts;  clerks  of  United  States 
circuit  or  district  courts;  mayors  or  chief  magistrates 
of  cities;  and  notaries  public.  If  any  such  magistrate  is 
counsel  or  attorney  for  either  party,  or  interested  in  the 
event  of  the  cause,  he  is  disqualified  from  acting.  Before 
such  a  deposition  is  taken,  reasonable  notice  thereof  must 
be  given  in  writing  by  the  party  intending  to  take  it,  or 
his  attorney  of  record,  to  the  opposite  party,  or  his  at- 
torney of  record,  as  either  may  be  nearest,  and  that  notice 
must  state  the  name  of  the  witness,  and  the  time  and 
place  of  taking  the  deposition.295 

The  formalities  to  be  observed  in  taking  and  transmit- 
ting such  depositions  are  prescribed  in  Sections  864  and 
865  of  the  Revised  Statutes;  and  they  must  be  strictly 
complied  with,  in  order  to  make  such  depositions  ad- 
missible as  against  proper  objections.  Indeed,  no  such 
deposition  is  admissible  in  any  event,  unless  it  appears  to 
the  satisfaction  of  the  court  that  the  witness  is  dead,  or 
gone  out  of  the  United  States,  or  to  a  greater  distance  than 
one  hundred  miles  from  the  place  where  the  court  is  sit- 
ting, or  that,  by  reason  of  age,  sickness,  bodily  infirmity, 
or  imprisonment,  he  is  unable  to  travel  and  appear  at 
court.'296  Where  the  witness  testified  in  his  deposition 
to  the  then  existence  of  the  fact  which  authorized  its 
taking,  that  fact  is  presumed  to  exist  at  the  time  the  depo- 
sition is  offered  in  evidence,  and  in  the  absence  of  contrary 
proof,  the  deposition  itself  will  satisfy  the  court  that  it  is 
entitled  to  be  admitted.297    Depositions  may  also  be  taken 

-95  Revised  Statutes,  Section  297  Whitford  v.  Clark  County, 
863.  119  U.  S.  524,  1886. 

299  Revised     Statutes,     Section 
865. 


592  ACTIONS    AT    LAW  [CHAP.    XVIII. 

in  act  ions  at  law  for  infringements  of  patents,  in  the  modes 
prescribed  by  the  laws  of  the  respective  States,298  in  any 
instance  in  which  such  a  deposition  can  be  taken  under 
Sections  864  and  805  of  the  Revised  Statutes  of  the 
United  States. m 

Where  a  deposition  is  being  taken  from  a  witness  who 
cannot  testify  in  the  English  language;  the  magistrate 
who  takes  it,  may  translate  the  questions  into  the  language 
of  the  witness,  and  propound  them  to  him  therein,  and 
may  translate  the  answers  into  English  and  record  them 
in  that  language.300 

Most  objections  to  depositions,  in  order  to  be  efficacious, 
must  be  made  before  the  depositions  are  received  in  evi- 
dence; for  when  introduced  with  the  acquiescence  of  the 
opposite  party,  they  cannot  afterward  be  excluded  on  the 
ground  that  they  were  not  taken  in  accordance  with  the 
rules  prescribed  therefor.301  But  where  evidence  is  per- 
tinent to  either  of  several  possible  defences,  one  or  more 
of  which  were  pleaded,  and  one  or  more  of  which  were  not 
pleaded  by  the  defendant;  the  fact  that  the  evidence  was 
not  objected  to  when  taken  or  admitted,  does  not  make  it 
admissible  in  support  of  any  defence  which  was  not 
pleaded.302 

§  536.  The  judge  may  direct  the  jury  to  return  a  verdict 
for  the  defendant,  where  it  is  entirely  clear  that  the  plain- 

298  27  Statutes  at  Large,  Ch.  14,  301  Evans  v.  Hettich,  7  Wheaton, 
p.  7.  453,  1822;  Howard  v.  Stillwell  & 

299  National  Cash  Register  Co.  Bierce  Mfg.  Co.,  139  U.  S.  199, 
v.  Leland,  77  F.  R.  242,  1896;  1891;  Bibb  v.  Allen,  149  U.  S.  481, 
Despeaux  v.  Pennsylvania  Rail-  1893;  Meyer  v.  Rothe,  13  App. 
road  Co.,  81  F.  R.  897,  1897;  Na-  D.  C.  99,  1898. 

tional  Cash  Register  Co.  v.  Le-  302  Zane  v.  Soffe,  5  Bann.  &  Ard. 
land,  94  F.  R.  505,  1899.  284,  1880. 

300  Meyer  v.  Rothe,  13  App.  D. 
C.  103,  1898. 


CHAP.    XVIII.]  ACTIONS    AT    LAW  593 

tiff  cannot  recover,  but  not  otherwise.303  Such  a  direction 
may  therefore  be  given,  where  want  of  novelty  or  want  of 
invention  is  clearly  shown  by  a  prior  patent,301  but  not 
where  that  question  is  doubtful.30''  And  such  a  direction 
may  be  given  where  the  question  of  infringement  depends 
entirely  upon  the  construction  of  the  patent;  and  where 
that  construction  does  not  depend  upon  any  doubtful 
question  of  the  prior  art.306 

But  where  the  question  of  infringement  depends  upon 
the  construction  of  the  patent,  and  that  construction  de- 
pends upon  a  doubtful  question  in  the  prior  art,  the  latter 
question  should  be  left  to  the  jury;  and  the  dependent 
question  of  infringement  should  also  be  left  to  the 
jury  to  decide.307  A  motion  that  the  judge  direct  the 
jury  to  return  a  verdict  for  the  defendant  needs  not  to 
specify  the  reason  on  which  it  is  based;  but  that  reason 
will  naturally  be  stated  in  the  argument  which  is  made  to 
support  the  motion.308 

§  537.  Instructions  to  juries  set  forth  the  construction 
of  patents  309  and  embody  all  the  law  that  is  applicable 
to  the  material  facts  in  evidence,  but  need  embody  no 
other.310  In  ascertaining  that  law,  the  judges  resort  to 
the  statutes  of  the  United  States,  and  to  the  decisions  of 
the  United  States  Supreme  Court;  and  where  further 

303  Klein   v.    Russell,    19   Wall.  68  F.   R.  201,   1895;  Jackson  v. 

463,   1873;  Keyes  v.  Grant,   118  Western    Fireproofing    Co.,    112 

U.  S.  25, 1886;  Connors  v.  Ormsby,  F.  R.  361,  1901. 

148  F.  R.  13,  1906.  307  Royer    v.    Belting   Co.,    135 

3°<  Market  St.  Ry.  Co.  r.  Row-  U.  S.  325,  1890. 

ley,  155  U.  S.  625,  1895.  3°8  May  v.  Juneau  County,  137 

305  San    Francisco   Bridge    Co.  U.  S.  410,  1890. 

v.     Keating,     68     F.     R,     353,  309  Holmes  v.  Truman,  67  F.  R. 

1895.  545,  1895. 

306  DeLoriea  v.  Whitney,  63  3I0  Haines  v.  McLaugnlin,  135 
F.  R.  611,  1894;  Cramer  v.  Fry,  U.  S.  598,  1890. 


594  ACTIONS    AT    LAW  [CHAP.    Will. 

information  is  required,  they  examine  or  call  to  mind  the 
decisions  of  the  Circuit  Courts  of  Appeals,  and  of  the  Cir- 
cuit and  District  Courts  of  the  United  States. 

But  judges  are  not  bound  to  conform  their  instructions 
to  any  statement  of  law  contained  in  any  opinion  of  any 
court,  unless  that  statement  was  applicable  to  the  case 
in  which  it  was  made.311  The  Supreme  Court  has  some- 
times decided  cases,  contrary  to  its  own  previous  obiter 
dicta;  and  the  circuit  court  decisions  contain  many  remarks 
which  cannot  be  harmonized  with  the  decisions  of  the  su- 
preme tribunal,  nor  be  incorporated  into  any  systematic 
science.  The  statements  of  the  best  text-writers  are  more 
likely  to  be  followed  by  the  Federal  courts  than  are  the 
dicta  of  the  judges  of  those  courts;  because  the  best  legal 
authors  fill  their  minds  with  the  subjects  which  they  treat, 
and  hold  those  subjects  in  solution  there  when  writing 
their  books;  while  the  dicta  of  judges  are  separately  written 
down,  without  adequate  comparison  with  adjudicated 
precedents,  or  full  harmonization  with  established  prin- 
ciples. 

Instructions  to  juries  may  express  the  opinions  of  the 
judges  upon  the  questions  of  fact  to  be  decided,312  but  an 
instruction  should  not  enforce  those  opinions  upon  the 
jury  for  its  guidance,313  and  should  not  include  the  reading 
of  a  charge  which  has  been  given  to  a  jury  in  another 
case.314  While  the  judge  is  bound  not  to  tell  the  jury  how 
to  decide  any  issue  of  fact,  the  judge  will  tell  them  what 
issues  of  fact  they  are  to  decide,  and  those  are  the  issues 

311  Day  v.  Rubber  Co.,  20  How-  Tooth  Crown  Co.  v.  Hanks  Dental 
ard,  216,  1857;  Day  v.  Stellman,  1  Ass'n,  111  F.  R.  919,  1901. 
Fisher,  487,  1859.  313  Turrill   v.    Railroad   Co.,    1 

312  Haines  v.  McLaughlin,  135  Wallace,  491,  1863. 

U.  S.  593,  1890;  Coupe  v.  Royer,  314Arey  v.  DeLoriea,  55  F.  R. 

155  U.  S.  579,  1895;  International      323,  1893. 


CHAP.    XVIII. j  ACTIONS   AT    LAW  595 

in  the  pleadings,  and  not  some  other  issue  which  the  judge 
may  think  is  the  one  upon  which  the  merits  of  the  case 
really  depend. 31s 

In  the  State  courts  of  most  of  the  States,  counsel  have  a 
right  to  require  all  instructions  to  be  given  in  writing;  but 
the  judges  of  the  Federal  courts  are  not  controlled  by 
State  regulations  in  the  manner  of  charging  juries,  and 
therefore  instructions  in  patent  cases  may  be  given  in 
writing,  or  may  be  given  orally,  at  the  option  of  the 
court.316 

§  538.  The  verdict  in  a  patent  action  will  be  for  the 
plaintiff,  if  every  defence  except  non-infringement  fails, 
and  if  that  fails  as  to  any  one  claim  of  the  letters  patent.317 
So  also,  the  plaintiff  is  entitled  to  a  verdict,  where  every 
defence  fails  except  the  sixteenth,  seventeenth,  and  eight- 
eenth, and  where  those  defences  lack  application  to  one 
or  more  of  the  claims  shown  to  have  been  violated.318 
So  also,  if  the  twenty-second,  twenty-third,  or  twenty- 
fourth  defence  is  the  only  successful  one,  and  if  that  is 
successful  only  as  to  part  of  the  alleged  infringement,  the 
plaintiff  will  be  entitled  to  a  verdict  as  to  the  residue;  and 
the  same  thing  may  be  true  of  the  twenty-sixth  or  of  the 
twenty-seventh  defence. 

§  539.  A  new  trial  may  be  obtained  by  the  defeated 
party,  if  the  jury  disregarded  the  instructions  of  the 
judge;319  or  failed  to  correctly  apply  them  to  the  issues 
of  the  case;  32°  but  not  where  the  only  error  complained  of 

315  Grant  v.  Raymond,  6  Peters,  640,  1882;  Gould  v.  Spicer,  15 
244,  1832.  F.  R.  344,  1882;  Cote  v.  Moffitt, 

316  Lincoln  v.  Power,  151  U.  S.      15  F.  R.  345,  1883. 

442,  1894.  319  Tucker  v.  Spalding,  13  Wal- 

317  Waterbury     Brass     Co.     v.      lace,  453,  1881. 

Now  York  Brass  Co.,  3  Fisher,  32°  Johnson  v.  Root,  2  Cliff.  108, 

43,  1858.  1862. 

318  Gage  v.  Herring,  107  U.  S. 


\ 


596  ACTIONS   AT    LAW  [CHAP.    XVIII. 

is  ;tn  alleged  wrong  decision  of  such  an  issue,  unless  it  was 
decidedly  against  the  weight  of  evidence.321 

Excessive  assessment  of  damages,  even  where  it  is  unde- 
niably so,  does  not  always  entitle  the  defendant  to  a  new 
trial.  Such  an  error  may  be  cured  by  the  plaintiff  remit- 
ting such  a  sum  as  the  judge  thinks  constitutes  the  excess, 
in  all  cases  where  he  thinks  that  the  error  of  the  jury  arose 
from  inadvertence;  but  where  the  circumstances  of  the 
case  clearly  indicate  that  the  error  arose  from  prejudice, 
or  from  reckless  disregard  of  duty  on  the  part  of  the  jury, 
a  new  trial  will  be  granted.322  But  an  excessive  verdict 
can  be  corrected  by  the  Circuit  Court  of  Appeals,  unless 
the  trial  judge  made  some  error  which  entitles  the  defeated 
party  to  a  new  trial.323 

EiTors  made  by  judge  may  also  entitle  a  party  to  a  new 
trial,  but  no  such  error  will  have  that  effect  unless  it  was 
excepted  to  at  the  time  it  was  committed;  nor  where  it 
consisted  in  erroneous  admission  of  evidence,  which  the 
subsequent  course  of  the  trial  rendered  nugatory.324  So, 
also,  where  the  error  of  the  judge  consisted  in  erroneous 
instructions  relevant  to  damages,  the  plaintiff  may  avoid 
a  new  trial  by  consenting  that  the  verdict  be  reduced  to 
nominal  damages  and  costs.325 

321  Alden   v.    Dewey,    1    Story,  tions  of  judge  and  jury  in  action 

336,  1840;  Stimpson  v.  Railroads,  at  law),  188  F.  R.  914,  1911. 

1  Wallace,  Jr.,  164,  1847;  AUen  v.  322  Stafford  v.  Hair-Cloth  Co.,  2 

Blunt,  2  Woodbury  &  Minot,  121,  Cliff.  83,  1862;  Johnson  v.  Root,  2 

1846;  Aiken  v.  Bemis,  3  Woodbury  Cliff.  108,  1862;  Russell  v.  Place, 

&  Minot,  348,    1847;  Wilson  v.  9  Blatch.  175,  1871. 

Janes,  3  Blatch.  227,  1854;  Bray  323  Hogg  v.  Emerson,  11  How- 

r.  Hartshorn,  1  Cliff.  538,  1860;  ard,  607,  1850. 

Roberts  v.  Schuyler,   12  Blatch.  324  Allen  v.  Blunt,  2  Woodbury 

448,    1875;   Heide    v.    Panonlias  &  Minot,  121,  1846. 

(differentiating     between     func-  325  Cowing  v.  Rumsey,  8  Blatch. 

36,  1870. 


CHAP.    XVIII.]  ACTIONS    AT    LAW  .")<)7 

Newly  discovered  evidence  may  also  furnish  a  good 
ground  for  granting  a  new  trial;  but  not  where  that  evi- 
dence might,  with  due  diligence,  have  been  obtained  be- 
fore the  former  trial,326  nor  where  it  is  merely  cumulative.327 
But  evidence  is  not  merely  cumulative,  where  it  refers  to 
facts  not  before  agitated,  though  it  may  refer  to  defences 
which,  in  the  former  trial,  were  based  on  other  facts/'' 
A  party  moving  for  a  new  trial  upon  the  ground  of  alleged 
newly  discovered  evidence,  must  succeed  or  fail  on  the 
strength  or  weakness  of  the  case  as  it  is  disclosed  in  his 
affidavits,  and  in  the  answering  affidavits  of  the  other 
party;  for  the  moving  party  is  not  permitted  to  rebut  the 
latter;  nor  will  he  be  entitled  to  a  new  trial,  if  the  opposing 
affidavits  make  out  a  strong  case  against  him.329  When 
a  new  trial  is  granted  on  the  ground  of  newly  discovered 
evidence,  the  terms  usually  are  that  the  costs  of  the  former 
trial  must  first  be  paid  by  the  appellant.330 

§  540.  Trials  by  a  judge  without  a  jury  require  to  be  so 
managed  that  the  issues  of  law  and  the  issues  of  fact  are 
kept  entirely  distinct;  for  his  decisions  on  the  former  are 
reviewable  by  the  Circuit  Court  of  Appeals,  while  his 
finding  of  fact  has  the  same  operation  as  the  verdict  of  a 
jury.331  If  the  finding  of  the  judge  be  a  general  one,  it 
is  conclusive  on  all  issues  of  fact,  and  is  also  conclusive 
on  all  questions  of  law,  except  those  which  arise  upon  the 
pleadings,  and  those  which  the  bill  of  exceptions  specifi- 

326  Washburn  v.  Gould,  3  Story,  329  Ames  v.  Howard,  1  Sumner, 
122,    1844;    Moneyweight    Scale      491,  1833. 

Co.   v.  Toledo  Computing  Scale  33°  Aiken  v.  Bemis,  3  Woodbury 

Co.,  199  F.  R.  905,  1912.  &  Minot,  358,  1847. 

327  Ames  v.  Howard,  1  Sumner,  331  Revised  Statutes,  Section 
482,  1833.  649;    St.    Paul    Plow    Works    v. 

328  Aiken  v.  Bemis,  3  Woodbury  Starling,  140  U.  S.  197,  1891. 
&  Minot,  358,  1847. 


598  ACTIONS   AT   LAW  [chap.    Will. 

cally  presents  as  having  been  ruled  upon  and  excepted 
to  in  the  progress  of  the  1  rial.''''2  If  the  finding  of  (he  judge 
be  a  special  one,  il  will  still  he  conclusive  on  the  facts 
found;  but  the  sufficiency  of  those  facts  to  support  the 
judgment  will  be  open  to  review  in  the  Circuit  Court  of 
Appeals.883  Where  the  judge  simply  finds  for  the  defend- 
ant, and  enters  a  judgment  accordingly,  that  judgment  can 
be  taken  to  the  Circuit  Court  of  Appeals  for  review  only 
in  the  regular  common-law  method  of  a  bill  of  exceptions 
and  a  writ  of  error,  and  only  on  pure  questions  of  law. ;:l 
Where  the  judge  finds  as  a  fact  that  the  patent  is  void  for 
want  of  novelty,  or  that  the  defendant  has  not  infringed 
it,  and  thereupon  enters  a  judgment  for  the  latter,  it  is 
undeniable  that  the  fact  so  found  is  sufficient  to  support 
that  judgment.  In  arriving  at  his  opinion,  the  judge  may 
have  misunderstood  or  misapplied  the  tests  of  novelty,  or 
of  infringement,  but  still  his  finding  is  conclusive;  because 
on  an  appeal  from  a  judgment  at  law  the  Circuit  Court  of 
Appeals  is  authorized  to  examine  nothing  but  the  suffi- 
ciency of  the  facts  found.335 

But  if  the  judge  finds  that  A.  B.  invented,  made  and 
used  a  certain  described  thing  in  the  United  States,  prior 
to  the  invention  of  the  patentee,  or  that  the  defendant 
made  or  used  or  sold  only  a  certain  described  thing  during 
the  life  of  the  patent,  and  therefore  renders  a  judgment 
for  the  defendant,  that  judgment  will  be  reversed  by  the 
Circuit  Court  of  Appeals  on  a  writ  of  error,  if  that  court 
is  of  opinion  that  the  thing  invented,  made  and  used  by 
A.  B.  did  not  negative  the  novelty  of  the  patent,  or  is  of 
opinion  that  the  thing  made,  used  or  sold  by  the  defendant 

332  Insurance  Co.  v.  Sea,  21  Wal-  "4  Revised  Statutes,  Sections 
lace,  160,  1874.  649  and  700. 

333  Revised  Statutes,  Section  335  Jennisons  v.  Leonard,  21 
700.  Wallace,  307,  1874. 


CHAP.    XVIII.]  ACTIONS    AT    LAW  599 

did  really  infringe  the  patent  in  suit.336  These  illustra- 
tions of  the  practice  in  trials  by  a  judge  without  the  aid 
of  a  jury,  show  that  where  special  findings  of  facts  are 
adopted  as  the  method  of  laying  a  foundation  for  a  review 
of  the  case  by  the  Circuit  Court  of  Appeals,  the  finding 
ought  to  relate  to  the  fundamental  facts  of  the  case,  and 
not  merely  to  the  conclusions  of  fact  which  are  deducible 
therefrom. 

§  541.  Trial  by  referee  may  be  instituted  by  an  entry  of 
the  clerk  of  the  court,  made  at  the  request  of  the  parties, 
simply  indicating  that  the  case  is  to  be  referred  to  the  per- 
son or  persons  named  as  referee;  or  it  may  be  ordained  by 
a  stipulation  in  writing,  signed  by  the  parties  or  their  at- 
torneys, and  filed  in  the  case.  When  that  is  done,  a  rule 
may  be  issued,  or  an  order  of  court  may  be  entered,  refer- 
ring the  case  to  the  referee  indicated  by  the  parties,  and 
directing  him  to  hear  and  determine  all  the  issues  thereof. 
It  thereupon  becomes  the  duty  of  the  referee  to  hear  the 
parties,  and  then  to  decide  the  controversy  and  make  a 
report  to  the  court.  The  report  may  be  special,  setting 
forth  the  details  of  the  evidence  upon  which  it  is  based, 
or  it  may  be  general,  giving  only  the  conclusions  to  which 
that  evidence  carried  the  mind  of  the  referee.  To  that 
report,  either  party  may  except  in  writing,  and  upon  the 
hearing  of  those  exceptions,  the  court  may  adopt  or  reject 
the  report  and  enter  judgment  accordingly,  or  it  may 
recommit  the  report  to  the  referee  with  further  direc- 
tions.337 

Such  is  substantially  the  outline  of  the  trial  by  referee, 
which  is  delineated  in  the  decision  just  cited.  Inasmuch 
as  that  form  of  trial  is  not  provided  for  by  any  United 

336  French  v.  Edwards,  21  Wal-  337  Heckers  v.   Fowler,  2  Wal- 

lace, 147,  1874;  Insurance  Co.  v.      lace,  132,  1864. 
Sea,  21  Wallace,  160,  1874. 


GOO  ACTION'S    AT    LAW  [CHAP.    Will. 

Stales  statute,  its  details  are  regulated  by  the  laws  of  the 
I  (articular  State  in  which  sucli  a  trial  is  had.888  Recourse 
must  therefore  be  had  to  those  laws  for  sundry  [joints  of 
information  relevant  to  the  methods  of  taking  testi- 
mony before  referees;  the  time  when  referees'  reports 
must  be  made;  the  weight  attached  to  such  reports  on 
issues  of  fact;  and  the  proper  practice  by  means  of  which 
to  secure  the  judgment  of  the  court  upon  reviewable 
points. 

§  542.  Judgments  follow  verdicts  of  juries,  findings  of 
judges,  or  reports  of  referees;  unless  those  verdicts  are 
set  aside,  those  findings  reconsidered  and  modified,  or 
those  reports  rejected  or  recommitted.  It  is  not  the 
practice  of  the  United  States  District  Courts  to  require  a 
rule  for  a  judgment  to  be  entered  in  any  case.  Judgments 
are  entered  by  the  clerk  of  the  court  under  a  special  or 
general  authority  from  the  judge,  and  where  so  entered 
are  binding  as  the  act  of  the  court.339  The  circumstances 
which  justify  courts  in  entering  judgments  in  patent 
cases,  for  any  sum  above  the  amount  of  the  verdict, 
finding,  or  report,  but  not  exceeding  three  times  the 
amount  thereof,  are  explained  in  the  chapter  on  damages. 
That  the  court  has  the  same  power  in  this  particular, 
in  cases  where  the  damages  are  ascertained  by  the  find- 
ing of  the  judge,  or  by  the  report  of  a  referee,  that  it  has 
in  cases  where  they  are  ascertained  by  the  verdict  of  a 
jury,  is  a  point  which  has  not  been  judicially  decided, 
but  is  one  which  can  hardly  be  doubted. 

§  543.  Costs  are  recoverable  by  all  plaintiffs  who  se- 
cure judgments  for  infringements  of  patents; 340  even  for 

338  Revised  Statutes,  Sections  340  Revised  Statutes,  Section 
721  and  914.  4919;  Merchant  v.  Lewis,  1  Bond, 

339  Heckers  v.   Fowler,  2  Wal-  172,  1857. 
lace,  132,  1864. 


CHAP.    XVIII.]  ACTIONS    AT    LAW  60] 

nominal  damages  only;341  except  where  it  appears  on 
the  trial  that  one  or  more  of  the  claims  of  the  letters 
patent  are  void  for  lack  of  being  the  subject  of  a 
patent,  or  for  want  of  invention,  or  for  want  of  novelty, 
and  it  does  not  appear  that  the  proper  disclaimer  was  filed 
in  the  Patent  Office  before  the  commencement  of  the 
action; 342  and  except  where  only  a  small  part  of  the  in- 
fringement alleged  by  the  plaintiff  is  found  by  the  ver- 
dict; 343  and  except  where  the  defendant  offered  before 
the  suit  was  begun,  to  submit  to  the  patent  and  to  pay 
a  definite  sum  as  damages  for  his  infringement,  and  which 
sum  was  as  large  as  the  plaintiff's  recovery; 341  and  ex- 
cept where  part  of  the  patents  or  part  of  the  claims  sued 
upon,  are  not  recovered  upon.345  In  the  last  mentioned 
case,  the  plaintiff  may  sometimes  recover  costs  on  account 
of  his  successful  patent  or  patents,  or  his  successful 
claim  or  claims,346  and  sometimes  not.347 

141  Williames   v.    McNeely,    77  Bird  Co.,  34  F.  R.  328,  1888;  Na- 

F.  R.  895,  1896.  tional  Machine  Co.  v.  Brown,  36 

342  Revised  Statutes,  Sections  F.  R.  322,  1888;  Schmid  v.  Mfg. 
973,  4917,  and  4922;  Metallic  Co.,  37  F.  R.  348, 1889;  Thomson- 
Extraction  Co.  r.  Brown,  110  Houston  Electric  Co.  v.  Elmira 
F.  R.  665,  1901;  General  Electric  Ry.  Co.,  71 F.  R.  886, 1895;  Amer- 
Co.  v.  Crouse-Hinds  Electric  Co.,  ican  Saddle  Co.  v.  Sager  Gear  Co., 
147  F.  R.  718,  1906;  Novelty  122  F.  R.  645,  1903;  Suddard  v. 
Glass  Mfg.  Co.  v.  Brookfield,  Am.  Motor  Co.,  103  F.  R.  852, 
172  F.  R.  221,  1909.  1908. 

343  Marks'  Chair  Co.  v.  Wilson,  3«  Green  v.  Lynn,  81  F.  R.  388, 
43  F.  R.  304,  1890.  1897 ;  J.  L.  Owens  Co.  v.  Twin  City 

344  Lowell  Mfg.  Co.  v.  Whittall,  Separator  Co.,  168  F.  R.  259, 
71  F.  R.  515,  1895.  1909;  Roth  v.  Harris,  168  F.  R. 

345  Adams  v.  Howard,  19  F.  R.  279,  1909. 

319,   1884;  Albany  Steam  Trap  347  Brill    v.    Delaware    County 

Co.  r.  Felthousen,  20  F.  R.  640,  Electric  Ry.  Co.,  109  F.  R.  901, 

1884;  Mann's  Car  Co.  v.  Monarch  1901;  Ide  v.  Trorlicht,  Duncker  & 

Car  Co.,   34   F.    R.    130,    1888;  Renard  Carpet  Co.,   115  F.   R. 

Ligowski  Clay-Pigeon  Co.  v.  Clay-  150,  1902. 


602  ACTIONS    AT    LAW  [CHAP.    XVIII. 

There  is  no  United  States  statute  which  provides  that 
defendants  shall  recover  costs  in  any  patent  case.  The 
common  law  of  England  allowed  no  costs  to  either  party 
in  any  action  at  law; 348  and  the  statutes  of  Gloucester,349 
which  supplied  that  defect  as  to  plaintiffs,  did  not  supply- 
it  as  to  defendants.  The  statute  of  23  Henry  VIII, 
Chapter  15,  enacted,  however,  that  where,  in  actions  on 
the  case,  the  plaintiff  is  nonsuited  after  the  appearance 
of  the  defendant;  or  where  the  verdict  happens  to  pass,  by 
lawful  trial,  against  the  plaintiff,  the  defendant  shall  have 
judgment  to  recover  his  cos"ts  against  the  plaintiff,  and 
shall  have  such  process  and  execution  for  the  recovery 
of  the  same,  as  the  plaintiff  might  have  had  against  the 
defendant,  in  case  the  judgment  had  been  given  for  the 
plaintiff.  This  statute  of  Henry  VIII,  having  been 
enacted  before  the  founding  of  the  English  colonies  in 
America,  and  being  suited  to  the  condition  of  society 
in  the  United  States,  is  in  force  in  the  United  States  courts 
to  the  same  extent  that  it  would  be  if  it  were  one  of  the 
rules  of  the  common  law.350 

§  544.  All  the  items  of  costs  which  are  taxable  in  a 
United  States  court  are  specified  in  the  United  States 
statutes,351  or  in  some  rules  of  that  court  authorized  by 
such  a  statute.352  The  province  of  a  taxing  officer  is 
therefore  limited  to  comparing  suggested  items  with  the 
particulars  of  those  statutes  and  rules,  and  to  taxing  those, 

348  Day  ».  Woodworth,  13  How-  823,  983;  The  Baltimore,  8  Wal- 
ard,  372,  1851.  lace,  392,  1869;  Lyell  v.  Miller,  6 

349  6  Edward  I,  Chapter  I,  McLean,  422,  1855;  Wooster  v. 
1278.  Handy,  23  F.  R.  60,  1885;  Kelly 

350  Hathaway  v.  Roach,  2  Wood-  v.  Springfield  Ry.  Co.,  83  F.  R. 
bury  &  Minot,  69,  1846;  Bunker  183,  1897. 

v.  Stevens,  26  F.  R.  249,  1885.  352  Tesla  Electric  Co.  v.  Scott, 

361  Revised    Statutes,    Sections      101  F.  R.  524,  1900. 


(MAP.    XVIII.]  ACTIONS   AT    LAW  603 

and  only  those,  which  he  finds  enumerated  therein.3'"'3 
And  no  expenses,  other  than  taxable  costs,  can  be  lawfully 
inserted  in  any  cost  bill.354  On  most  points,  the  statutes 
relevant  to  fees  are  so  clear  that  they  require  no  explana- 
tion;  but  in  some  particulars  they  needed  and  have  re- 
ceived judicial  construction.  Several  such  cases  may  be 
conveniently  explained  in  a  few  of  the  sections  which 
immediately  follow. 

§  545.  One  attorney's  docket  fee  is  taxable  in  each 
case  against  the  defeated  party.355  There  is  no  warrant 
for  taxing  the  unsuccessful  party  with  a  separate  docket 
fee  for  each  of  his  adversary's  attorneys,  nor  with  a  sepa- 
rate docket  fee  for  each  term  during  which  a  case  has  been 
pending  in  court,  nor  for  taxing  any  docket  fee  in  favor  of 
any  attorney  of  the  defeated  party.  Neither  is  there  any 
warrant  for  taxing  an  attorney's  deposition  fee  in  favor  of 
any  attorney  of  the  beaten  party,  or  in  favor  of  more 
than  one  attorney  of  the  party  which  prevails  in  the  ac- 
tion.356 And  taxable  attorney's  fees  are  taxed  in  favor  of 
clients  to  help  them  pay  their  attorneys,  and  not  in  favor 
of  attorneys  as  extra  compensation.357 

§  546.  The  fees  of  the  clerk  of  the  court  are  in  general 
taxable  against  the  defeated  party;  but  several  of  the 
items  to  which  he  is  entitled  are  not  so  taxable,  but  are 
to  be  paid  by  the  party  for  which  he  rendered  the  serv- 
ices to  which  they  refer.  Among  those  items,  are  copies 
of  the  record  ordered  by  a  party  for  his  own  use.358    As 

353  Dedekam  v.  Vose,  3  Blatch.  1869;  Parker  v.  Bigler,  1  Fisher, 
153,  1853.  285,  1857. 

354  Parks  v.  Booth,  102  U.  S.  356  Revised  Statutes,  Section 
106,  1880.  824. 

355  Dedekam  v.  Vose,  3  Blatch.  357  Celluloid  Mfg.  Co.  v.  Chand- 
153,  1853;  Troy  Iron  &  Nail  Fac-  ler,  27  F.  R.  9,  1886. 

tory   v.   Corning,   7   Blatch.    17,  358  Caldwell     v.     Jackson,      7 

Cranch,  277,  1812. 


Ii()-I  ACTIONS   AT    law  [CH  \l'.    will. 

the  greater  must  include  the  less,  this  rule  must  apply 
also  to  copies  of  pleadings,  depositions  or  other  papers 
which  form  parts  of  the  records  of  cases. :,•',"  The  extent 
to  which  clerks  may  make  records,  and  charge  defeated 
parties  therefor,  depends  upon  the  rules  of  each  court 
in  actions  at  law;  but  in  actions  in  equity,  that  matter 
is  regulated  by  Section  750  of  the  Revised  Statutes. 

§  547.  The  fees  of  a  commissioner  or  other  magistrate, 
who  takes  a  deposition  in  a  case,  are  strictly  limited  to 
twenty  cents  for  each  hundred  words  in  the  deposition.300 
Those  fees  are  generally  taxable  against  the  defeated 
party,361  but  if  the  deposition  is  not  offered  in  evidence 
at  the  trial,  those  fees  cannot  be  so  taxed.362  And  reason- 
ing by  analogy  from  the  taxation  of  attorneys'  deposi- 
tion fees,  it  should  follow  that  magistrates'  fees  are  not 
taxable  on  depositions  which  are  offered  in  evidence,  but 
are  not  admitted.363 

§  548.  Witness  fees  are  generally  taxable  against  the 
defeated  party,  whether  the  testimony  was  given  orally 
in  court  or  by  deposition  before  a  magistrate.364  But  they 
are  not  so  taxable  when  the  testimony  is  taken  by  deposi- 
tion and  the  deposition  is  not  offered,365  or  if  offered,  is 
not  admitted  in  evidence.366  Nor  will  a  defeated  party 
be  taxed  with  the  fees  of  more  than  three  witnesses  to  one 
fact,  unless  the  prevailing  party  satisfies  the  court  by 
affidavit,  that  the  additional  witnesses  were  really  neces- 
sary to  adequately  support  his  contention  on  that  point.367 

359  Tesla  Electric  Co.  v.  Scott,  363  Revised  Statutes,  Section 
101  F.  R.  525,  1900.                            824. 

360  Tesla  Electric  Co.  v.  Scott,  384  Revised  Statutes,  Section 
101  F.  R.  525,  1900.                            848. 

36i  Fry  „.  Yeaton,  1  Cranch's  365  Hathaway  v.  Roach,  2  Wood- 
Circuit  Court  Reports,  550,  1809.  bury  &  Minot,  63,  1846. 

382  Hathaway  v.  Roach,  2  Wood-  36«  Section  547  of  this  book, 

bury  &  Minot,  75,  1846.  387  Bussard     v.      Catalino,      2 


CHAP.    XVIII.]  ACTIONS    AT    LAW  605 

Whether  any  defeated  party  is  taxable  with  the  fees  of 
any  witness  who  testified  on  request  and  without  a  sub- 
poena, is  an  unsettled  question,  upon  which  there  are  two 
decisions  in  the  affirmative,368  and  three  decisions  in  the 
negative.369  If  it  is  necessary,  in  order  to  make  witness 
fees  taxable,  that  the  witness  should  be  served  with  a  sub- 
poena, it  is  not  necessary  that  he  should  be  so  served  by  any 
officer.    Service  by  a  private  person  is  sufficient.370 

Witness  fees  are  taxable  in  favor  of  a  defendant,  though 
his  witnesses  are  not  examined,  because  the  action  is  not 
prosecuted;  and  where  witnesses  attend  more  than  once 
at  the  same  term,  because  of  a  stipulated  postponement 
of  the  trial,  their  fees  are  to  be  taxed  as  for  continuous 
attendance  during  the  interim,  and  not  as  for  repeated 
journeys  from  their  homes.371  Witnesses  from  a  distance 
are  entitled  to  fees  for  Sunday,  where  they  are  detained 
over  that  day.372 

§  549.  The  taxation  of  costs  may  properly  be  made  at 
the  time  the  judgment  is  entered,  and  that  is  the  course 
which  best  secures  the  rights  of  the  parties.  But  a  blank 
may  be  left  in  the  judgment  for  that  purpose,  and  may  be 
filled  by  a  taxation  made  nunc  pro  tunc,  after  the  judgment 
has  been  affirmed  by  the  Circuit  Court  of  Appeals.373 
Where  the  former  practice  is  followed,  the  legality  of  the 
taxation  may  probably  be  reviewed  by  the  Circuit  Court 
of  Appeals,  if  the  case  is  taken  to  that  forum  by  the  de- 

Cranch's  Circuit  Court  Reports,          37°  Power  v.  Semmes,  1  Cranch's 
421,  1823.  Circuit     Court     Reports,     247, 

368  Cummings  v.  Plaster  Co.,  6      1805. 

Blatch.  510, 1869;  Dennis  v.  Eddy,  371  Hathaway  v.  Roach,  2  Wood- 

12  Blatch.  196,  1874.  bury  &  Minot,  63,  1846. 

369  Dreskill  v.  Parish,  5  McLean,  372  Schott  v.  Benson,  1  Blatch. 
213,  1851;  Woodruff  v.  Barney,  2  564,  1850. 

Fisher,    244,    1862;    Spalding    v.  373  Sizer  v.  Many,  16  Howard, 

Tucker,  4  Fisher,  637,  1871.  98,  1853. 


606  \»  news  \ t  law  [chap.  win. 

Pendant,  to  secure  a  reversal  of  a  judgmenl  againsl  him  for 
substantia]  damages  as  well  as  costs,  and  if  the  court 
affirms  or  modifies  the  judgmenl  as  to  the  damages.374 
But  where  only  nominal  damages  and  costs  are  adjudged 
against  a  defendant,  he  cannot  take  the  case  to  the  Circuit. 
Court  of  Appeals  for  the  purpose  of  securing  a  reversal 
of  the  judgment  or  a  diminution  of  the  costs. :iT:'  AYhere 
a  judgment  for  costs  is  entered  against  a  plaintiff  on  the 
basis  of  a  verdict  for  the  defendant,  the  plaintiff  may  go 
to  the  Circuit  Court  of  Appeals  on  a  writ  of  error.  If 
he  secures  a  reversal  of  the  judgment  for  errors  on  the 
trial,  there  will  be  no  occasion  for  the  court  to  consider 
the  correctness  of  the  taxation  of  costs.  If,  on  the  other 
hand,  the  court  finds  no  error  upon  which  to  ground  a 
reversal,  it  will  seek  for  no  error  in  the  taxation.376 

The  clerks  of  the  District  Courts  are  the  primary  taxing 
officers  of  those  tribunals;  but  they  perform  that  duty 
under  the  general  or  particular  direction  of  the  judges. 
And  such  directions  may  properly  be  given  by  a  judge 
when  entering  a  judgment  in  a  case.377 

The  taxation  of  costs  is  ordinarily  made  by  the  clerk  on 
his  own  motion,  or  at  the  request  of  the  prevailing  party, 
and  without  notice  to  the  defeated  party.  If  the  latter 
is  dissatisfied  with  the  result,  the  court  will  hear  his  motion 
for  a  retaxation.  If  such  a  motion  is  accompanied  with  an 
explanation  showing  colorable  ground  for  a  claim  of  error 
in  the  taxation,  the  court  will  order  the  clerk  to  retax  the 
costs,  upon  the  mover  giving  the  opposite  party  due  notice 

374  Parks  v.  Booth,  102  U.  S.  panies,  3  Peters,  318,  1830;  Rob- 
106,  1880.  bins   v.    Illinois   Watch   Co.,    81 

375  Elastic  Fabrics  Co.  v.  Smith,      F.  R.  959,  1897. 

100  U.  S.  110,  1879;  Paper-Bag  377  Eastman  Co.  v.  Getz,  84 
Cases,  105  U.  S.  772,  1881.  F.  R.  462,  1898. 

376  Canter   v.    Insurance    Com- 


CHAP.    XVIII. |  ACTIONS    AT    LAW  007 

of  the  time  and  place  thereof,  and  paying  the  costs  occa- 
sioned thereby.378  Then,  if  either  party  is  dissatisfied 
with  the  result  of  the  retaxation,  he  may  appeal  to  the 
court;  but  as  a  foundation  for  the  hearing  of  such  an  ap- 
peal, he  must  secure  from  the  clerk  an  itemized  bill  of  the 
charges  to  which  he  objects; 379  and  as  a  foundation  for 
success  on  that  hearing,  must  show  that  part  or  all  of 
those  items  are  unwarranted  by  the  statute,  or  are  untaxa- 
ble because  they  refer  to  evidence  which  was  immaterial 
to  the  case,  and  improperly  taken  therein.380  All  of  these 
proceedings  must  take  place  at  the  term  in  which  the  judg- 
ment is  entered; 381  except  in  a  case  where  a  blank  for  costs 
is  left  in  a  judgment,  pending  a  writ  of  error. 

§  550.  A  writ  of  error  properly  taken  out  from  the  office 
of  the  clerk  of  any  Circuit  Court  of  Appeals,382  will  carry 
any  action  at  law  for  an  infringement  of  a  patent  from  any 
court  subordinate  thereto,  to  that  court,  regardless  of  the 
amount  of  damages  in  controversy; 383  and  whether  the 
case  was  tried  by  a  jury,  by  a  referee,  or  by  a  judge  alone.384 
But  no  writ  of  error  can  carry  any  question  of  fact  to  a 
Circuit  Court  of  Appeals.385 

The  sole  function  of  such  a  writ  is  to  secure  from  such 
tribunal  a  review  of  the  questions  of  law  involved  in  a  case, 
or,  where  the  finding  below  was  made  by  a  judge,  and  was 

378  Collins  v.  Hathaway,  Olcott's  383  Revised  Statutes,  Section 
Reports,  182,  1845.  699;  26  Statutes  at  Large,  p.  826, 

379  Dedekam  v.  Vose,  3  Biatch.      Ch.  517,  Section  6. 

153,  1853.  384  York  &   Cumberland  Rail- 

380  Ecaubert  v.  Appleton,  67  road  Co.  v.  Myers,  18  Howard, 
F.  R.  926,  1895.  246,  1855;  Heckers  v.  Fowler,  2 

381  Blagrove     v.  Ringgold,     2      Wallace,  123,  1864. 

Cranch's  Circuit  Court  Reports,  386  Heckers  v.  Fowler,  2  Wal- 
407,  1823.  lace,  123,  1864. 

382  West  v.   Barnes,   2  Dallas, 
401,  1791. 


608  A.CTIONS    A.T    LAW  [CHAP.    Will. 

special,  to  secure  a  review  of  the  question  whether  the 
facta  so  found  are  sufficient  to  support  the  judgment  based 
thereon.886 

Any  action  at  law  for  infringement  of  a  patent  which 
has  been  pending,  and  has  been  decided  in  the  Supreme 
Court  of  the  District  of  Columbia,  may  be  taken  by  a 
writ  of  error  to  the  Court  of  Appeals  of  the  District  of 
Columbia,387  and  the  decree  of  the  latter  court  is  final,  no 
review  being  allowed  in  the  Supreme  Court,388  except  by 
certiorari.388" 

Where  a  new  trial  is  had  in  a  District  Court,  or  in  the 
Supreme  Court  of  the  District  of  Columbia,  in  pursuance 
of  a  writ  of  error,  and  where  the  case  is  again  taken  to  an 
appellate  court  by  another  writ  of  error,  that  upper  court 
is  bound  by  its  own  prior  decision  on  all  the  points  decided 
therein.389 

Actions  at  law  for  infringements  of  patents  cannot  be 
taken  by  a  writ  of  error,  from  any  Circuit  Court  of  Appeals, 
to  the  Supreme  Court  of  the  United  States. 

Any  Circuit  Court  of  Appeals  may  certify  to  the  Su- 
preme Court  any  pure  question  of  law,  upon  which  it 
desires  the  instruction  of  that  court  for  its  proper  de- 
cision.390 And  the  Supreme  Court  may  send  a  certiorari 
to  any  Circuit  Court  of  Appeals,  requiring  any  case  for 
infringement  of  a  patent  to  be  sent  to  the  Supreme  Court 
for  its  review  and  determination.391 

§  551.  Bills  of  exception,  allowed  and  signed,  or  sealed 
by  the  judge,  constitute  the  only  mode  by  which  the  ques- 

386  Revised     Statutes,     Section  389  Standard  Sewing  Mach.  Co. 
700;  Singer  Mfg.  Co.  v.  Cramer,  v.  Leslie,  118  F.  R.  559,  1902. 
192  U.  S.  265,  1904.  39°  Graver  v.  Faurot,  162  U.  S. 

387  27  Statutes  at  Large,  Ch.  74,  435,  1896;  Cross  v.  Evans,  167 
Section  7,  p.  435.  U.   S.   60,   1897;  Judicial  Code, 

388  Judicial  Code,  Section  250.  Section  239. 

388(1  Judicial  Code,  Section  251.  391  Judicial  Code,  Section  240. 


CHAP.    XVIII. J  ACTIONS    AT    LAW  609 

tions  of  law  that  arise  on  the  trial  of  a  case,  can  be  pre- 
pared for  transmission  to  an  appellate  court  in  pursuance 
of  a  writ  of  error.392  But  a  paper  which  is  incorporated  in 
the  record,  and  which  has  all  the  substantial  characteris- 
tics of  a  bill  of  exceptions,  will  be  treated  as  such,  even 
though  it  is  not  so  entitled.393  Such  a  document  should 
state  no  more  of  the  case  than  is  necessary  to  present  the 
questions  which  are  reviewable  in  the  appellate  court, 
and  which  the  plaintiff  in  error  seeks  to  have  reviewed 
there.394  If  those  questions  relate  only  to  the  pleadings, 
the  pleadings  only  should  be  inserted  in  the  bill  of  excep- 
tions. Where  those  questions  relate  only  to  the  compe- 
tency of  a  witness,  the  bill  of  exceptions  need  only  show 
that  the  witness  was  offered,  and  was  accepted  or  rejected, 
as  the  case  may  be,  and  that  such  admission  or  rejection 
was  duly  excepted  to,  and,  in  case  of  a  rejection  of  a  wit- 
ness to  want  of  novelty,  that  due  notice  of  the  fact,  to  be 
proved  by  him,  was  served  on  the  opposite  party; 395  and 
where  particular  answers  of  a  competent  witness  were 
excluded  by  the  court  below,  the  bill  of  exceptions  must 
contain  those  answers,  and  must  show  that  they  were 
material  to  the  issues;  and  where  particular  questions  were 
excluded,  and  therefore  not  answered,  the  bill  of  excep- 
tions must  show  what  facts  the  party  offered  to  prove  by 
means  of  those  questions,  and  that  such  facts  were  material 
to  the  case.396  And  where  a  particular  question  was  ob- 
jected to,  but  was  admitted  and  was  answered,  the  bill 
of  exceptions  must  show  what  the  answer  was,  in  order  to 

392  Insurance  Co.  v.  Lanier,  95  39s  Philadelphia  &  Trenton  Rail- 

U.  S.  171,  1877.  road  Co.  v.  Stimpson,  14  Peters, 

193  Herbert  v.  Butler,  97  U.  S.  448,  1840;  Blanchard  v.  Putnam, 

319,  1877.  8  Wallace,  420,  1869. 

394  Hausknecht   v.   Claypool,    1  396  Railroad   Co.   v.   Smith,    21 

Black,  431,  1861.  Wallace,  255,  1874. 


(510  ACTIONS    AT    LAW  [CHAP.    Will. 

enable  the  appellate  court  to  pass  upon  the  propriety  of 

the  evidence11'''7 

§  552.  Where  the  questions  which  are  sought  to  be 
brought  before  the  Court  of  Appeals,  relate  only  to  the 
instructions  which  the  court  below  gave,  or  refused  to 
give  to  the  jury,  the  bill  of  exceptions  should  set  forth  the 
issues  of  the  pleadings,  and  the  substance  of  the  charge 
or  refusal  to  charge,  as  the  case  may  be,  together  with 
whatever  part  of  the  evidence  is  necessary  to  enable  the 
Court  of  Appeals  to  decide  upon  the  propriety,  or  impro- 
priety, of  the  action  of  the  court  below. 

The  issues  of  the  pleadings  should  be  stated  in  the  bill 
of  exceptions,  for  otherwise  the  appellate  tribunal  cannot 
know  whether  the  charge  or  refusal  to  charge,  which  was 
excepted  to,  was  material  to  the  case;  and  because  the 
Court  of  Appeals  will  not  sit  to  try  moot  issues  of  law,  nor 
to  establish  legal  propositions  in  cases  wherein  those  prop- 
ositions are  not  involved.398 

The  substance  of  the  charge,  rather  than  the  charge  in 
extenso,  should  be  stated  in  the  bill,  because  the  Court  of 
Appeals  cannot  afford  to  be  occupied  in  listening  to  minute 
criticisms  and  observations  upon  expressions  incidentally 
introduced  into  a  charge  for  purposes  of  argument  or  illus- 
tration, and  which,  if  they  were  the  direct  point  in  judg- 
ment, might  need  qualification,  but  which  do  not  show, 
that  the  relevant  law  was  not  justly  expounded  to  the 
jury.399  But  the  whole  substance  of  the  charge  should  be 
stated  where  nothing  but  charged  matter  is  excepted  to; 
because  if  part  is  omitted,  the  Court  of  Appeals  cannot 
know  that  the  omitted  portion  did  not  cure  the  faults 

397  Lovell  v.  Davis,  101  U.  S.  3"  Evans  v.  Eaton,  7  Wharton, 
542,  1879.                                            356,  1822. 

398  Jones  v.  Buckell,  104  U.  S. 
554,  1881. 


CHAP.    XVIII.]  ACTIONS    AT    LAW  (ill 

of  the  parts  inserted.400  So  also,  where  the  matter  which 
is  excepted  to  is  a  refusal  to  charge;  not  only  the  refused 
instruction,  but  also  the  whole  substance  of  the  given 
charge,  should  be  inserted  in  the  bill  of  exceptions;  for 
otherwise  the  Court  of  Appeals  cannot  be  informed 
whether  the  refused  instruction  was  not  substantially 
contained  in  the  charge  which  was  actually  given;  and 
because  judges  are  never  bound  to  instruct  juries  in  the 
form  requested,  provided  they  substantially  embody  the 
whole  of  the  relevant  law  in  the  charges  which  they  give.401 

Where  nothing  but  charged  matter  is  excepted  to,  the 
bill  of  exceptions  should  not  contain  any  part  of  the  evi- 
dence; because  the  only  question  before  the  Court  of 
Appeals  in  such  a  case  is  the  correctness  of  the  charge.402 
But  where  a  refusal  to  charge  is  excepted  to,  the  bill  must 
contain  the  evidence  to  which  the  refused  instruction  re- 
lates, or  must  contain  a  statement  of  facts  pertinent  to 
that  point,  and  a  statement  that  evidence  was  introduced 
tending  to  prove  those  facts;  because  no  court  is  bound 
to  give  any  charge  which  does  not  relate  to  the  evidence, 
no  matter  how  sound  the  proposed  instruction  may  be, 
as  a  proposition  of  law. 

§  553.  Specific  exceptions  must  be  made  to  instructions, 
in  order  to  entitle  the  objector  to  a  review  of  those  instruc- 
tions in  the  Court  of  Appeals.  Where  a  requested  instruc- 
tion is  refused,  and  the  refusal  is  excepted  to,  that  refusal 
will  be  sustained  by  the  Court  of  Appeals,  if  the  requested 
instruction  was  unsound  in  any  particular.403  Counsel 
ought  therefore  to  carefully  separate  their  propositions  of 

400  Meyers  v.  Sternheim,  97  402  Pennock  v.  Dialogue,  2 
F.  R.  625,  1899.  Peters,  1,  1829. 

401  Indianapolis  &  St.  Louis  403  Indianapolis  &  St.  Louis 
Railroad  Co.  v.  Horst,  93  U.  S.  Railroad  Co.  v.  Horst,  93  TJ.  S. 
295,  1876.  295,  1876. 


612  ACTIONS    AT    LAW  [CHAP.    Will. 

law  from  each  other,  when  framing  their  requests  for  in- 
structions, lest  one  erroneous  proposition  deprive  them  of 
the  benefit  of  several  sound  ones. 

§  554.  Exceptions  to  charges,  or  to  refusals  to  charge, 
must  be  made  and  noted  while  the  jury  is  at  the  bar.104 
But  bills  of  exception  may  be  drawn  up,  and  signed  or. 
sealed  by  the  judge  at  any  time  before  the  expiration  of 
the  term,  unless  the  judge  enforces  some  rule  of  his  court 
which  prescribes  a  shorter  time  for  the  preparation  and 
presentation  of  such  documents  for  his  approval.  And,  if 
not  otherwise  too  late,  such  bills  may  be  prepared  and 
signed  after  a  writ  of  error  has  been  sued  out  from  the 
Court  of  Appeals,  to  transfer  the  case  to  that  tribunal.405 

*°«  Phelps   v.    Mayer,   15  How-  »«  Hunnicutt    v.    Peyton,    102 

ard,  160,  1853.  "  U.  S.  353,  1880. 


CHAPTER   XIX 


DAMAGES 


555.  The  generic  measure  of  dam- 

ages. 

556.  Established  royalties  as  spe- 

cific measures  of  damages. 

557.  Tests  applied  to  royalties  on 

behalf  of  defendants. 

558.  Tests  applied  to  royalties  on 

behalf  of  plaintiffs. 

559.  Money    paid    for    infringe- 

ment already  committed, 
is  no  measure  of  damages 
in  another  case. 

560.  Royalties  reserved  on  sales 

of  patents. 

561.  Royalties    for    licenses    to 

make  and  use,  and  royal- 
ties for  licenses  to  make 
and  sell. 

562.  Proportion  of  licensed  to  un- 

licensed practice  of  an 
invention. 


563.  Hurtful  competition  in  the 

absence  of  an  established 
royalty,  causes  recover- 
able damages. 

564.  Damages      for      unlicensed 

making,  without  unli- 
censed selling  or  using. 

565.  Evidence  of  damages. 

566.  Indirect  consequential  dam- 

ages. 
566a.  Reasonable  royalties. 

567.  Exemplary  damages. 

568.  Increased  damages. 

569.  Actual  damages  not  affected 

by  infringement  being  un- 
intended. 

570.  Counsel  fees  and  other  ex- 

penses. 

571.  Interest  on  damages. 

57 la.  Damages  in  design  cases. 


§  555.  The  pecuniary  injury  which  a  plaintiff  incurs 
by  reason  of  a  defendant's  infringement  of  his  patent,  is 
the  generic  measure  of  the  damages  which  that  plaintiff 
is  entitled  to  recover  on  account  of  that  infringement.1 
Such  an  injury  is  often  called  the  plaintiff's  loss,2  and 


1  Coupe  v.  Royer,  155  U.  S. 
582,  1895;  Goodyear  v.  Bishop,  2 
Fisher,  158,  1861;  Graham  v. 
Mfg.  Co.,  24  F.   R.  643,   1881; 


Brickill  v.  Baltimore,  60  F.  R.  98, 
1894. 

2  Suffolk  Co.  v.  Hayden,  3  Wal- 
lace, 315,  1865;  Cowing  v.  Rum- 
613 


til  I  DAMAGES  [CHAP.    XIX. 

sometimes  it  is  strictly  that,  but  often  it  is  a  loss  only  in 
the  sense  that  it  is  a  failure  to  acquire  a  just  and  deserved 
gain.3  Whether  the  injury  caused  to  a  plaintiff  by  an 
infringement  was  a  loss  in  one  or  the  other  of  these  3enses, 
its  magnitude  must  always  be  ascertained,  in  order  to  as- 
certain the  amount  of  the  damages  which  he  is  entitled 
to  recover.  The  amount  of  the  profits  which  the  defend- 
ant derived  from  his  infringement,  has  no  direct  relevancy 
to  the  question  of  the  plaintiff's  damages.  In  the  firsl 
place  the  defendant's  profits  as  such  are  not  recoverable 
in  an  action  at  law; 4  and  in  the  second  place  they  cannot 
be  used  as  a  measure  of  damages,  because  they  are  some- 
times much  larger  than  the  plaintiff's  pecuniary  injury; 5 
and  where  they  are  smaller,  that  fact  is  no  defence  to  the 
plaintiff's  right  to  recover  full  damages  for  the  pecuniary 
injury  which  the  infringement  caused  him  to  incur.6  But 
where  a  patentee  has  elected  to  recover  the  infringer's 
profits,  instead  of  his  own  damages,  in  an  action  in  equity, 
he  cannot  recover,  for  the  same  infringement,  his  damages 
in  an  action  at  law.7 

To  ascertain  the  extent  of  the  pecuniary  injury  which 
a  particular  infringement  caused  a  particular  plaintiff, 
it  is  necessary  to  ascertain  the  difference  between  his 
pecuniary  condition  after  that  infringement,  and  what 
that  condition  would  have  been  if  that  infringement  had 

sey,    8    Blatch.    36,    1870;    Mc-  Ransom,  23  Howard,  487,  1859; 

Comb  v.  Brodie,  1  Woods,  161,  Packet  Co.  v.  Sickles,  19  Wallace, 

1871; La Baw ^.Hawkins,  2 Barm.  611,1873;  Beach  v.  Hatch,   153 

&  Ard.  563,  1877.  F.  R.  763,  1907. 

3  Hobbie  v.  Smith,  27  F.  R.  662,  «  Emerson  v.  Simm,  6  Fisher, 
1886.  281,  1873;  Dental  Vulcanite  Co. 

4  Brown  v.  Lanyon,  148  F.  R.  v.  Van  Antwerp,  2  Barm.  &  Ard. 
838,  1906.  255,  1876. 

5  Seymour  v.  McCormick,  16  7  Child  v.  Iron  Works,  19  F.  R. 
Howard,  480,  1S53;  New  York  v.  258,  1884. 


CHAP.    XIX.]  DAMAGES  615 

not  occurred.8  If  he  availed  himself  of  his  patent,  by 
granting  licenses  to  others  to  do  the  things  which  the  de- 
fendant did  without  a  license,  then  that  difference  con- 
sists in  his  not  having  received  the  royalty  which  such  a 
license  would  have  brought  him.9  If  he  so  availed  him- 
self, by  keeping  his  patent  right  a  close  monopoly  and 
granting  licenses  to  no  one,  then  that  difference  consists 
of  the  money  he  would  have  realized  from  such  a  close 
monopoly  if  the  defendant  had  not  infringed;  but  which 
that  infringement  prevented  him  from  receiving. 10  There- 
fore there  are  several  methods  of  assessing  damages  for 
infringements  of  patents.  The  primary  method  consists 
in  using  the  plaintiff's  established  royalty  as  the  measure 
of  those  damages,11  and  the  second  consists  in  ascertain- 
ing those  damages  by  ascertaining  what  the  defendant's 
interference  with  the  plaintiff's  close  monopoly  prevented 
the  latter  from  deriving  therefrom;  12  and  the  third  con- 
sists in  proving  what  would  have  been  a  reasonable 
royalty.13  It  is  convenient  to  consider  these  three  criteria 
of  damages  separately,  and  in  the  order  in  which  they  have 
been  stated. 

§  556.  Royalties,  as  measures  of  damages,  are  some- 
times objected  to  by  defendants,  and  sometimes  by  plain- 

8  Yale  Lock  Co.  v.  Sargent,  117  462,  1873;  Yale  Lock  Co.  v.  Sar- 
U.  S.  552,  1885.  gent,  117  U.  S.  552,  1885;  Mc- 

9  Seymour  v.  McCormick,  16  Comb  v.  Brodie,  1  Woods,  153, 
Howard,  480,  1853;  New  York  v.  1871;  Covert  v.  Sargent,  38  F.  R. 
Ransom,  23  Howard,  487,  1859;  238,  1889. 

Philip  v.  Nock,  17  Wallace,  462,  »  Brickill  v.  Baltimore,  60  F.  R. 

1873;  Clark  v.  Wooster,  119  U.  S.  98,  1894. 

326,  1886;  Tilghman  v.  Proctor,  12  Zane  v.  Peck,  13  F.  R.  475, 

125  U.  S.  143,  1887;  Graham  v.  1882. 

Mfg.  Co.,  24  F.   R.  643,   1881;  13  Dowagiac  Mfg.  Co.  v.  Min- 

Timken  v.  Olin,  41  F.   R.   171,  nesota   Plough   Co.,    235   U.    S. 

1890.  641,  1915. 

10  Philip  v.  Nock,   17  Wallace, 


616  DAMAGES  [CHAP.    \i\. 

lift's.  When  invoked  by  a  plaintiff,  a,  royalty  is  liable  to 
one  class  of  tests,  applied  on  behalf  of  the  defendanl ; 

and  when  invoked  by  a  defendant  to  limit  the  plaintiffs 
recovery,  it  is  liable  to  another  class  of  tests,  applied  on 
behalf  of  the  plaintiff. 

§  557.  A  defendant  may  successfully  object  to  a  given 
royalty,  as  a  measure  of  the  plaintiff's  damages,  unless  it 
was  uniform,  and  was  actually  paid  or  secured  before  the 
defendant's  infringement  was  coimnitted,  by  a  sufficient 
number  of  persons  to  show  that  people  who  have  occasion 
to  purchase  a  license  under  the  patent,  can  afford  to  pay 
that  royalty.14  The  sale  of  a  single  license  is  not  sufficient 
to  establish  a  royalty,15  because  one  purchaser  may  give 
a  larger  sum  for  a  license  than  he  or  any  other  can  afford 
to  pay;  whereas  such  a  business  error  is  not  likely  to  be 
made  by  a  considerable  number  of  persons  when  buying 
licenses  under  the  same  patent.  The  unanimous  opinion 
of  twelve  average  men  is  thought  to  be  the  most  reliable 
criterion  of  guilt  or  innocence;  but  no  reasonable  person 
would  hold  that  view,  of  the  opinion  of  any  one  of  the 
twelve.  In  like  manner,  the  unanimous  acquiescence  of  a 
considerable  number  of  men  in  a  particular  royalty,  is 
evidence  of  its  substantial  justice,  while  the  acquiescence 
of  one  only  of  the  same  men  would  have  no  convincing 
force. 

The  amount  of  the  royalty  relied  upon  must  have  been 
actually  paid  or  secured  by  the  licensees  in  order  to  make 
it  a  measure  of  damages  against  other  infringers.  Were 
the  rule  otherwise,  there  would  be  no  safeguard  against 

14  Rude  v.  Westcott,  130  U.  S.  Ry.  Co.  v.  Stern,  74  F.  R.  636, 
152,    1889;   Adams   v.   Stamping      1896. 

Co.,  28  F.  R.  366,   1886;  Hunt  15  Judson  v.  Bradford,  3  Bann. 

Bros.  Fruit  Packing  Co.  v.  Cas-  &  Ard.  549,  1878;  Vulcanite  Pav- 
sidy,  53  F.  R,  262,  1892;  Houston      ing  Co.  v.  Pavement  Co.,  36  F.  R. 

378,  1888. 


CHAP.    XIX. |  DAMAGES  ()17 

collusion  between  patentees  and  licensees  for  the  purpose 
of  imposing  on  infringers  and  other  third  parties.  It 
follows  that  the  mere  production  of  a  quantity  of  licenses, 
purporting  to  have  been  granted  at  a  certain  rate,  cannot 
establish  a  ro}'alty  at  that  rate.  Somebody  must  make 
oath  that  the  ostensible  price  of  the  licenses  was  their 
true  price,  before  they  can  have  that  effect.  The  oath 
and  not  the  license  being  the  best  evidence  of  the  royalty, 
the  royalty  may  be  proved  by  the  oath  without  the  pro- 
duction of  the  license,  even  where  the  license  is  in  writing. 16 

A  royalty,  in  order  to  be  binding  on  a  defendant  who 
was  a  stranger  to  the  licenses  which  established  it,  must  be 
a  uniform  royalty.17  This  rule  does  not  imply  that  a 
patentee  may  not  change  the  rate  of  his  royalty  as  often 
as  he  can  get  a  sufficient  number  of  licensees  to  acquiesce 
in  such  a  change;  18  but  it  does  exclude  from  considera- 
tion all  such  licenses  as  were  given  at  variant  rates,  for  no 
better  reason  than  variant  ability  on  the  part  of  the  li- 
censees to  negotiate  for  a  license  or  to  resist  a  suit  for  in- 
fringement.19 

So,  also,  a  particular  royalty  may  be  successfully  ob- 
jected to  by  a  defendant,  if  it  was  not  established  till 
after  the  infringement  sued  upon  was  committed.-0    And 

18  Wooster     v.     Simonson,     20  19  Black  v.  Munson,  14  Blatch. 

F.  R.  316,  1884;  Timken  v.  Olin,  268,    1877;    United    Nickel    Co. 

41  F.  R.  170,  1890.  v.   Railroad  Co.,  36   F.   R.    100, 

"Westcott  v.  Rude,  19  F.  R.  1888. 

833,  1884;  Diamond  Stone  Saw-  Contra,  American  Sulphite  Pulp 

ing  Machine  Co.  v.  Brown,   155  Co.  v.  De  Grasse  Paper  Co.,  193 

F.  R.  753,  1907.  F.  R.  653,  1912,  holding  that  the 

18  Asmus  v.  Freeman,  34  F.  R.  lowest  royalty  will  form  the  basis 

902,  1888;  Fox  v.  Knickerbocker  of    damages;    also    Consolidated 

Engraving  Co.,    158  F.   R.  422,  Rubber    Tire    Co.    v.    Diamond 

1908;  Consolidated  Rubber  Tire  Rubber    Co.,    232    F.    R.    475, 

Co.  v.  Diamond  Rubber  Co.,  232  1916. 

F.  R.  475,  1916.  *>  Emigh    v.    Railroad    Co.,    6 


618  DAMAGES  [CHAP.    XIX. 

it  is  probable  that  a  defendant  may  avoid  the  application 
of  a  particular  royalty  by  showing  that  a  different  rate  whs 
established  in  the  particular  city,  county  or  State  wherein 

he  unlawfully  availed  himself  of  the  patentee's  invention. 

§  558.  A  plaintiff  may  successfully  object  to  a  pari  icular 
royalty  as  a  measure  of  Ins  damages,  where  that  royalty 
was  established,  and  was  intended  to  be  established, 
within  a  particular  territory  only,  or  where  it  was  changed 
or  abandoned  before  the  infringement  in  suit  was  com- 
mitted. These  two  points  rest  upon  obvious  reasons.  A 
patentee  may  wish  to  hold  a  close  monopoly  on  his  inven- 
tion in  Maine,  while  willing  to  grant  licenses  in  Florida; 
or  he  may  rightfully  demand  a  much  larger  royalty  in 
Minnesota  than  that  which  he  is  willing  to  accept  in 
Texas  or  in  Oregon.  In  such  a  case,  it  is  clear  that  his 
Oregon  royalty  is  not  to  be  forced  upon  him  for  infringe- 
ment committed  in  Minnesota;  and  that  his  business 
in  Maine  is  not  to  be  ruined  by  infringers  who  have  noth- 
ing worse  to  fear  at  the  end  of  the  suit  than  the  payment 
of  a  royalty  like  that  established  in  Florida. 

So,  also,  it  has  often  happened,  and  may  happen  again, 
that  an  inventor  is  forced  by  poverty,  or  other  misfortune, 
to  accept  inadequate  royalities  during  the  earlier  years  of 
his  exclusive  right.  In  such  a  case,  it  is  clear  that  he 
ought  to  be  permitted  to  increase  the  rate  whenever  he 
can  get  licensees  to  consent  thereto,  or  to  abandon  his 
royalty  altogether  and  hold  a  close  monopoly  on  his  in- 
vention, as  far  as  he  can  do  so  consistently  with  licenses 
outstanding. 

§  559.  Money  paid  for  infringement  already  committed 
does  not  establish  nor  tend  to  establish  a  royalty.21    A 

F.  R.  284,  1881;  Diamond  Stone  21  Rude  v.  Westcott,  130  U.  S. 
Sawing  Machine  Co.  v.  Brown,  152,  1889;  Comely  v.  Marck- 
166  F.  R.  306,  1908.  wald,  131  U.  S.  159,  1889;  Black 


CHAP.    XIX.]  DAMAGES  (ill) 

price  paid  to  compromise  a  pending  action,  or  an  existing 
right  of  action,  may  sometimes  be  larger  and  sometimes 
be  smaller  than  a  proper  royalty  would  be.  It  may  be 
larger  where  the  infringer  is  a  person  who  is  disinclined 
to  litigation,  or  where  he  has  some  reason  to  fear  a  judg- 
ment for  triple  damages,  or  where  the  compromise  releases 
him  not  only  from  damages,  but  also  from  all  rights  of 
action  for  infringer's  profits.  It  may  be  smaller  where 
the  infringer  is  presumably  insolvent,  or  where  the  amount 
involved  is  too  small  to  justify  the  expense  incident  to  its 
collection  by  an  action  at  law. 

§  560.  A  royalty  which  is  reserved  as  the  whole  or  a 
part  of  the  purchase  price  of  a  patent,  is  not  a  proper  one 
to  measure  damages  as  against  an  infringer.22  It  may  be 
too  large,  or  it  may  be  too  small  for  that  purpose.  It  will 
be  too  large  when  the  patent  is  of  such  a  nature  that  the 
buyer  can  afford  to  pay  more  for  a  close  monopoly,  than 
for  a  license  to  complete  with  other  licensees.23  It  will  be 
too  small,  where  it  is  for  the  interest  of  the  owners  of  the 
patent  to  subdivide  the  right  to  practice  the  invention. 
In  the  latter  class  of  cases,  the  buyer,  in  order  to  get  paid 
for  introducing  the  invention  and  retailing  the  licenses, 
must  sell  them  at  a  higher  rate  than  that  which  he  pays 
to  the  patentee. 

v.  Munson,  14  Blatch.  268,  1877;  1888;  Keyes  v.  Refining  Co.,  43 

Greenleaf  v.  Mfg.  Co.,  17  Blatch.  F.  R.  478,  1890;  Ewart  Mfg.  Co. 

253,  1879;  Matthews  v.  Spangen-  v.  Baldwin  Cycle-Chain  Co.,  91 

berg,  14  F.  R.  350,  1882;  National  F.  R.  265,  1898;  Diamond  Stone 

Car  Brake  Shoe  Co.  v.  Mfg.  Co.,  Sewing   Machine  Co.  v.  Brown, 

19  F.  R.  517,  1884;  Westcott  v.  166  F.  R.  306,  1908. 

Rude,  19  F.  R.  832,  1884;  Gott-  22  La  Baw  v.  Hawkins,  2  Barm. 

fried  v.  Brewing  Co.,  22  F.  R.  &  Ard.  564,  1877. 

433,  1884;  Comely  v.  Marckwald,  23  Colgate  v.  Mfg.  Co.,  28  F.  R. 

32  F.  R.  292,  1885;  United  Nickel  147,  1886. 

Co.  v.  Railroad  Co.,  36  F.  R.  190, 


620  DAMAGES  [CHAP.    SIX. 

§561.  A  royally  provided  for  in  licenses  to  make  and 
use,  is  no  measure  of  damages  for  an  infringement  which 
consisted  of  making  and  selling  the  patented  thing;  nor 
is  a  royalty  which  was  established  by  licenses  to  make 
and  sell  specimens  of  the  invention  covered  by  a  patent, 
any  criterion  of  the  injury  which  may  have  been  inflicted 
on  the  pecuniary  interests  of  the  owner  by  unlawfully 
making  and  using  such  specimens.'-1  These  rules  rest 
upon  undeniable  reasons.  The  value  of  some  patents 
resides  almost  entirely  in  the  exclusive  right  to  make  and 
sell,  while  that  of  others  consists  almost  wholly  in  the 
exclusive  right  to  make  and  use  the  inventions  which  they 
respectively  cover. 

§  562.  In  measuring  damages  with  a  royalty,  due  re- 
gard must  be  had  to  proportion.  "Where  an  infringement 
was  smaller  in  extent  or  shorter  in  duration  than  the 
-corresponding  doings  which  were  authorized  by  the  li- 
censes wrhich  established  the  royalty,  it  is  but  just  that  the 
damages  should  be  assessed  at  a  correspondingly  smaller 
sum,  unless  there  are  special  facts  in  the  case  which  render 
the  particular  extent  of  the  infringement  immaterial  to 
the  plaintiff.25  In  like  manner,  damages  will  amount  to 
a  sum  correspondingly  larger  than  the  royalty  which  con- 
stitutes their  criterion,  when  the  infringement  in  suit 
was  larger  or  was  longer  than  the  doings  authorized  by 
the  licenses  which  established  the  royalty. 

So,  also,  where  only  part  of  the  inventions  covered  by  a 
particular  patent  are  unlawfully  appropriated  by  an  in- 
fringer, he  is  liable  for  only  an  equitable  proportion  of  the 

24  Colgate  v.  Mfg.  Co.,  28  F.  R.  v.  Simonson,  16  F.  R.  680,  1883; 
147,  1886.  Westcott  v.  Rude,  19  F.  R.  834, 

25  Birdsall  v.  Coolidge,  93  U.  S.  1884;  Bates  v.  Railroad  Co.,  32 
70,  1876;  Judson  v.  Bradford,  3  F.  R.  628,  1887. 

Bann.  &  Ard.  549,  1878;  Wooster 


CHAP.    XIX.]  DAMAGES  021 

royalty  which  has  been  established  for  all  of  those  inven- 
tions jointly; 2G  and  where  a  royalty  has  been  established 
for  the  joint  employment  of  all  of  the  inventions  covered 
by  several  patents,  damages  for  the  infringement  of  part 
of  those  patents  may  be  equitably  assessed  by  dividing 
that  royalty  into  portions  proportionate  to  the  value  of 
the  several  -inventions  covered  by  those  patents.27  But 
the  plaintiff  must  furnish  data  in  his  evidence,  upon  which 
to  make  this  division.28 

§  563.  Where  no  established  royalty  is  applicable  as  a 
measure  of  the  damages  caused  by  a  particular  infringe- 
ment, those  damages  may  be  ascertained  by  the  second 
method ;  that  is,  by  finding  what  the  plaintiff  would  have 
derived  from  his  monopoly  if  the  defendant  had  not  in- 
terfered, but  which  he  failed  to  realize  because  of  that 
interference  with  his  rights. 

Where  the  owner  of  a  patent  is  able  to  supply  the  whole 
demand  for  the  article  it  covers,  and  where  the  whole 
demand  would  go  to  him  in  the  absence  of  infringement; 
the  losses  inflicted  upon  him  by  an  infringer,  may  consist 
in  reducing  his  sales,  or  in  reducing  his  prices,  or  in  both 
those  injurious  ways.  His  sales  may  be  reduced  by  the 
omission  of  the  infringer  to  buy  from  him,  while  procuring 
infringing  articles  elsewhere  or  otherwise.  His  sales  may 
also  be  reduced  by  competing  sales  made  by  the  infringer 
to  others,  who  in  the  absence  of  that  competition,  would 
have  purchased  from  the  patentee.  The  sum  of  the  profits 
which  the  patentee  would  have  derived  from  the  sales 
which  the  infringer's  course  prevented  the  patentee  from 
making,  and  the  sum  of  the  reduction  in  prices  which  the 

29  Willimantic    Thread    Co.    v.  -7  Porter  Needle  Co.  v.  Needle 

Clark  Thread  Co.,  27  F.  R.  865,  Co.,  22  F.  R.  829,  1885. 

1886;  Asmus  v.  Freeman,  34  F.  R.  28  Hunt    Bros.    Fruit    Packing 

903,  1888.  Co.  v.  Cassidy,  53  F.  R.  262,  1892. 


622 


D  IMAGES 


|'  ii  \r.    XIX. 


infringer's  course  compelled  the  patentee  to  make  on  the 
sales  which  he  did  effect,  or  cither  of  those  elements  in  the 
absence  of  the  other,  make  up  the  amount  of  the  damages 
which  the  patentee  is  entitled  to  recover  from  the  infringer, 
where  there  is  no  established  royalty  applicable  to  their 
measurement.29  Where  only  part  of  the  profits  which 
plaintiff  would  have  made,  would  be  attributable  to  the 
invention,  the  total  profits  must  be  apportioned  between 
those  due  to  the  invention  and  those  due  to  other  causes.-" 
Proof  of  the  element  of  lost  sales,  includes  evidence  to 
show  what  profits  the  patentee  would  have  derived  from 
the  sales  which  the  infringer's  course  prevented  him  from 
making; 31  and  evidence  to  show  that  he  could  have  sup- 
plied the  articles  which  the  infringer  procured  elsewhere,32 
and  the  articles  which  the  infringer's  competition  pre- 
vented him  from  selling  to  others;33  and  evidence  to  show 
that  the  infringer  would  have  purchased  from  him,  rather 
than  do  without  such  articles;34  and  evidence  to  show  that 

29  Yale  Lock  Co.  v.  Sargent,  117          32  Rose  v.  Hirsh,  94  F.  R.  178, 
U.  S.  552,  1885;  Boesch  v.  Graff,      1899. 

133  U.  S.  705,  1891;'  Seabury  v.  33  Crosby  Valve  Co.  v.  Safety 
Am  Ende,  152  U.  S.  569,  1894; 
Fitch  v.  Bragg,  16  F.  R.  247,  1883; 
Hobbie  v.  Smith,  27  F.  R.  662, 
1886;  Creamer  v.  Bowers,  35 
F.  R.  207,  1888;  Am  Ende  v.  Sea- 
bury,  43  F.  R.  673,  1890;  Force  v. 
Sawyer-Boss  Mfg.  Co.,  143  F.  R. 
894,  1906;  McSherry  Mfg.  Co.  v. 
Dowagiac  Mfg.  Co.,  160  F.  R. 
948,  1908. 

30Stockham  v.  Duncan,  226 
F.  R.  740,  1915. 

31  Comely  v.  Marckwald,  131 
U.  S.  161,  1889;  Bemir  Box  Car 
Co.  v.  J.  G.  Brill  Co.,  200  F.  R. 
749,  1912. 


Valve  Co.,  141  U.  S.  452,  1891; 
Regina  Music  Box  Co.  v.  Otto, 
114  F.  R.  505,  1902. 

34  Rose  v.  Hirsh,  94  F.  R.  178, 
1899;  Underwood  Typewriter  Co. 
v.  E.  C.  Stearns  &  Co.,  227  F.  R. 
74,  1915;  contra,  Transit  Develop- 
ment Co.  v.  Cheatham  Electric 
Switching  Device  Co.,  194  F.  R. 
963,  1912;  where  it  is  held  that 
it  is  presumed  that  the  purchas- 
ers would  have  bought  from 
an  authorized  source  if  they 
had  not  bought  from  the  de- 
fendant. 


CHAP.    XIX.]  DAMAGES  623 

the  persons  who  purchased  infringing  articles  from  the 
infringer,  would  have  bought  them  from  the  patentee,  if 
they  could  not  otherwise  have  procured  them.35 

The  first  three  of  the  five  elements  of  evidence  specified 
in  the  last  paragraph  must  be  direct  and  strong.  The 
last  two  of  those  elements,  though  not  necessarily  direct, 
must  at  least  be  legitimate  circumstantial  evidence.36  But 
where  the  defendant's  infringement  was  wanton,  that 
evidence  needs  not  to  be  so  strong,  as  where  it  was  unin- 
tentional or  was  the  result  of  error  of  information  or  of 
judgment.37 

Proof  of  the  element  of  reduced  prices  includes  evidence 
to  show  that  it  was  the  defendant's  infringement  that 
caused,  or  helped  to  cause,  the  reduction  of  prices  which 
the  patentee  was  compelled  to  make,38  and  evidence  of 
the  extent  of  the  reduction  so  caused ; 39  but  it  does  not 
include  evidence  that  the  patentee  would  have  been  asked 
to  supply  the  particular  demand  which  was  supplied  by 
the  defendant,  if  the  defendant  had  not  supplied  it. 

Where  damages  cannot  be  assessed  on  the  basis  of  a 
royalty,  nor  on  that  of  lost  sales,  nor  on  that  of  hurtful 
competition,  only  nominal  damages  can  be  recovered  for 
the  infringement  of  a  patent.40 

36  Dobson  v.  Dornan,  118  U.  S.  237,  1889;  Kinner  v.  Shepard,  107 

18,  1885;  Goodyear  v.  Bishop,  2  F.  R.  952,  1901. 

Fisher,   161,   1861;  Magic  Ruffle  37  Rose  v.  Hirsh,  94  F.  R.  178, 

Co.   v.   Douglas,    2   Fisher,   340,  1899;  Regina  Music  Box  Co.  v. 

1863;   Sargent   v.   Mfg.    Co.,    17  Otto,  114  F.  R.  506,  1902. 

Blatch.  247,  1879;  Hall  v.  Stern,  38  Ingersoll    v.     Musgrove,      3 

20  F.  R.  788,   1884;  Roemer  v.  Bann.  &  Ard.  304,  1878;  Holmes 

Simon,  31  F.  R.  41,  1887;  Bell  v.  v.  Truman,  67  F.  R.  545,  1895. 

Stamping  Co.,  32  F.  R.  551,  1887;  39  Comely  v.   Marckwald,   131 

Tatum  v.  Gregory,  51  F.  R.  447,  U.  S.  161,  1889;  Boesch  v.  Graff, 

1892.  133  U.  S.  703,  1890. 

36  Covert  v.  Sargent,  38  F.  R.  40  City  of  Seattle  v.  McNamara, 

81  F.  R.  863,  1897. 


1 12  I  DAMAGES  [CHAP.    XIX. 

§  564.  Damages  for  infringement  l>y  making,  without 

unlawfully  selling  or  using,  specimens  of  a  patented  thing 
will  be  nominal  only,"  unless  there  is  an  established  roy- 
alty for  such  making,4-  or  unless  the  amount  of  a  reason- 
able royalty  can  be  shown  or  unless  some  definite  damage 
can  be  proved  on  some  basis  not  yet  discoverable  in  the 
statutes  or  in  the  precedents. 

§  565.  The  evidence  of  damages  must  be  reasonably 
definite,43  in  order  to  justify  a  jury  in  finding  a  verdict 
for  more  than  a  nominal  amount.  Conjecture  will  not 
perform  the  office  of  proof,  nor  can  imagination  take  the 
place  of  calculation  in  this  behalf.14  But  this  rule  is  not 
to  be  used  to  defeat  the  ends  of  justice.  It  may  happen 
that  a  plaintiff  can  prove  the  measure  of  his  damages  with 
precision,  while  unable  to  prove  the  real  extent  of  the 
defendant's  infringement.  In  such  a  case,  the  defendant 
can  usually  remove  the  uncertainty,  because  he  is  likely 
to  know  or  be  able  to  ascertain  what  and  how  much  he 
has  done.  If,  by  omitting  to  supply  the  information,  a 
defendant  could  avert  a  verdict  for  proper  damages,  he 
could  easily  defeat  a  meritorious  cause.  But  the  law  will 
not  allow  itself  to  be  thus  circumvented.  On  the  contrary, 
it  is  the  rule  that  where  a  plaintiff  introduces  evidence  to 
show  that  the  damages  were  large,  and  to  show  the  amount 
of  those  damages  as  accurately  as  the  nature  of  the  case 
permits  him  to  do,  and  where  the  defendant  offers  no  evi- 
dence upon  the  subject,  it  becomes  the  function  of  the  jury 
to  estimate  those  damages  as  best  they  can,  on  the  basis 

41  Whittemore  v.  Cutter,  1  Gal-  43  Creamer  v.  Bowers,  35  F.  R. 
lison,  483,  1813;  Carter  v.  Baker,  208,  1888;  Williames  v.  McNeely, 
4  Fisher,  419,  1871  77  F.  R.  894,  1896. 

42  Ketchum  Harvester  Co.  r.  44  New  York  v.  Ransom,  23 
Johnson  Harvester  Co.,  8  F.  R.  Howard,  487,  1859. 

586,  1881. 


CHAP.    XIX. |  DAMAGES  625 

of  the  plaintiff's  evidence.45  In  making  such  an  estimate, 
a  jury  ought  to  resolve  every  point  of  uncertainty  against 
the  defendant,  for  he  had  it  in  his  power  to  give  them  ac- 
curate data  upon  which  to  compute.46  When  the  patent 
on  which  suit  is  brought  covers  an  improvement  on  an 
existing  device,  it  is  incumbent  on  the  plaintiff  to  show  how 
much  of  his  loss  was  due  to  the  improvement.47  And  so 
if  he  has  deliberately  and  persistently  infringed  the  pat- 
ent.48 

§  566.  Remote  consequential  damages  cannot  be  em- 
bodied in  a  verdict  for  an  infringement  of  a  patent.49  The 
instances  in  which  such  damages  have  been  claimed  are 
but  few,  but  they  are  likely  to  become  more  numerous 
hereafter.  It  is  therefore  proper  to  mention  such  injuries 
as  will  probably  be  held  to  fall  within  such  a  category. 

Pecuniary  injury  may  result  to  a  patentee  from  a  par- 
ticular infringement,  in  that  it  caused  him  to  incur  com- 
petition and  consequent  loss,  in  business  outside  of  the 
patent  infringed ;  or  in  that  it  so  unexpectedly  reduced  the 
business  of  the  patentee  as  to  make  it  necessary  for  him 
to  sell  unpatented  property  at  less  than  its  real  value, 
or  to  borrow  money  at  more  than  a  proper  rate  of  interest, 
in  order  to  meet  his  pecuniary  engagements;  or  in  that  it 
encouraged  other  persons  to  infringe,  from  whom,  by 
reason  of  insolvency  or  other  obstacle,  no  recovery  can 
be  obtained ;  or  in  that  such  infringement  caused  the  pat- 
entee so  much  trouble  and  anxiety  that  he  incurred  loss 
from  inability  to  attend  to  other  business.    But  pecuniary 

45  Stephens  v.  Felt,  2  Blatch.  38,  48  Consolidated  Rubber  Co.  v. 
1846.                                                   Diamond  Rubber  Co.,  232  F.  R. 

46  National  Car-Brake  Shoe  Co.      475,  1916. 

v.  Mfg.  Co.,  19  F.  R.  520,  1884.  49  Carter   v.   Baker,    4   Fisher, 

<•  Baker  v.  Crane  Co.,  138  F.  R.      421,  1871. 
60,  1905. 


626  DAMAGES  [CHAP.    XIX. 

injury  of  either  of  these  kinds  would  be  such  an  indirect 
consequential  matter  as  not  to  furnish  any  part  of  a 
proper  basis  for  recoverable  damages. 

§  566a.  If  the  plaintiff  has  not  availed  himself  of  his 
patent  rights  by  granting  licenses,  or  his  license  fees  are  not 
of  such  uniformity  as  to  enable  him  to  prove  his  damage 
by  proof  of  established  royalties  and  in  the  absence  of 
proof  of  lost  sale  or  injury  by  competition,  the  only  re- 
course of  the  plaintiff  is  to  prove  what  would  have  been  a 
reasonable  royalty  for  the  defendant  to  pay/'0  The  prob- 
lem of  determining  what  constitutes  a  reasonable  royalty 
offers  many  difficulties  and  it  can  at  the  best  be  no  more 
than  an  estimate.  In  Consolidated  Rubber  Tire  Co.  v. 
Diamond  Rubber  Co.51  the  court  in  determining  the 
amount  of  a  reasonable  royalty  based  its  decision  on  es- 
tablished royalties  which  the  plaintiff  had  secured  during 
a  period  prior  to  that  with  which  the  accounting  was 
concerned,  as  it  appeared  that  there  were  no  elements 
that  could  properly  have  operated  to  reduce  that  royalty. 
The  principle  was  also  anounced  that  in  determining  the 
amount  of  a  reasonable  royalty,  room  must  be  left  for  the 
usual  profit  in  the  business  of  the  defendant  together  with 
the  cost  of  production.  The  court  said:  "  Whether  the  re- 
sulting price  will  be  greater  than  what  the  market  can 
bear  only  experience  can  test,  which  means  that  what  the 
market  will  bear  determines  the  license  value  or  royal- 
ties." The  essential  circumstances  upon  which  a  reason- 
able royalty  wTas  fixed  were  that  the  plaintiffs  had  prior 
to  the  period  of  the  accounting  established  a  royalty  of 
ten  to  twenty  cents;  that  later  the  plaintiffs,  having 

M  Dowagiac  Mfg.  Co.  v.  Min-         51  Consolidated    Rubber    Tire 

nesota  Plow  Co.,  235  U.  S.  641,  Co.  v.  Diamond  Rubber  Co.,  226 

1915;  United  States  Frumentum  F.  R.  455,  1915. 
Co.  v.  Lauhoff,  216  F.  R.  610, 1914. 


CHAP.    XIX. |  DAMAGES  627 

begun  to  manufacture  the  component  parts  of  that  pat- 
ent, abandoned  the  license  agreement,  charging  instead 
a  flat  rate  for  the  rubber  stock  which  was  one  of  the  ele- 
ments of  the  patented  combination,  a  practice  which  they 
continued  until  the  Circuit  Court  of  Appeals  of  the  Sixth 
Circuit  in  1902  declared  their  patent  void.  In  1911, 
however,  the  patent  was  finally  declared  valid.  The 
question  at  issue  concerned  the  period  from  1902  to  1911, 
during  which  the  plaintiffs  naturally  had  great  difficulty 
in  obtaining  any  return  on  their  patent  at  all.  The  con- 
tracts by  which  they  charged  the  flat  rate  specifically 
agreed  that  the  price  should  include  the  rent  of  a  brazing 
or  welding  machine  and  the  royalty  for  the  patent  in 
suit  together  with  a  design  patent.  The  "rent  and  roy- 
alty "  so  fixed  was  originally  twenty  cents,  but  competi- 
tion cut  this  down' first  to  ten  cents  and  subsequently 
to  five  cents.  In  order  to  determine  the  amount  of  the 
reasonable  royalty,  the  court  went  about  it  by  "disen- 
tangling from  this  joint  sum  (rent  and  royalty)  the  amount 
of  the  reasonable  royalty."  The  process  of  disentangle- 
ment is  detailed  in  the  report  of  the  case.  Another  point 
that  was  announced  in  the  case  was  that  the  amount  of 
the  defendants'  profits  could  not  be  taken  as  an  element  in 
determining  a  reasonable  royalty. 

How  an  owner  of  a  patent  who  had  never  granted 
licenses  or  manufactured  under  his  patent,  in  short  who 
had  a  mere  un worked  "paper  patent,"  would  prove  the 
amount  of  a  reasonable  royalty  under  his  patent,  is  left 
for  future  decisions  to  determine.  Unlike  the  method 
of  proving  damages  by  showing  the  amount  of  sales  lost 
to  the  plaintiff,  the  "reasonable  royalty"  doctrine  is  in- 
dependent of  that  element,  for  it  is  immaterial  whether  or 
not  a  plaintiff  has  ever  derived  any  profit  from  his  patent 
at  all,  except  in  so  far  as  profits  derived  from  the  patent 


628  DAMAGES  [CHAP.    XIX. 

may  be  proper  evidence  upon  which  to  affix  the  amount 
of  a  reasonable  royalty.  As  the  court  in  the  Consolidated 
Rubber  Tire  Co.  case  said:  "In  estimating  loss  of  sales, 
it  is,  of  course,  necessary  to  show  that  the  patentee  would 
have  made  the  sales.  Not  so  with  licenses.  Every  wheel 
made  up  with  Diamond  rubber  was  a  wheel  upon  which 
the  plaintiffs  lost  a  license  whether  they  would  have 
manufactured  it  or  not.  In  contributing  to  that  eventual 
infringement  which  occurred  when  the  rubber  was  so 
used,  they  contributed  to  a  tort,  the  damages  from  which 
are  to  be  estimated  by  a  loss  of  the  royalties,  which  could 
have  been  got  for  that  wheel.  Whether  the  defendants 
could  have  secured  better  terms  is  beside  the  point.  What 
they  did  was  to  deprive  the  plaintiffs  of  a  corresponding 
amount  of  royalties  on  wheels,  and  the  licenses  for  wheels 
are  established."  ' 

§  567.  Exemplary  damages  cannot  lawfully  be  given  by 
a  jury  for  any  infringement  of  a  patent.52  The  meaning 
of  this  rule  is  that  juries  are  to  base  verdicts  on  plaintiff's 
injuries,  and  not  on  defendant's  ill-deserts.  Their  func- 
tion is  to  award  compensation  to  the  injured,  not  punish- 
ment to  the  injurer.  The  power  to  inflict  punitive  dam- 
ages is  committed  by  the  statute  to  the  judge.  He  may 
exercise  that  power  by  entering  a  judgment  for  any  sum 
above  the  amount  of  the  verdict,  not  exceeding  three  times 
that  amount,  together  with  costs,53  or  by  declining  to 
increase  the  damages  beyond  the  amount  found  by  the 
verdict;  and  in  either  case  his  judgment  will  not  be  over- 
ruled by  the  Circuit  Court  of  Appeals,  unless  the  evidence 

52  Wilbur  v.  Beecher,  2  Blatch.  Russell  v.  Place,  5  Fisher,   134, 

143,  1850;  Hall  v.  Wiles,  2  Blatch.  1871. 

200,    1851;   Parker   v.   Hulme,    1  "Revised     Statutes,     Section 

Fisher,    56,     1849;    Haselden    v.  4919;  Seymour  v.  McCormick,  16 

Ogden,     3     Fisher,     378,     1868;  Howard,  489,  1853. 


CHAP.    XIX.]  DAMAGES  629 

clearly  demands  it."'1  The  costs  are  to  be  added  to  the 
increased  verdict,  and  the  judgment  cannot  be  entered 
for  a  sum  three  times  greater  than  the  aggregate  of  the 
verdict  and  the  costs;  and  if,  for  any  reason,  no  costs  are 
awarded  to  the  plaintiff,  that  fact  neither  ousts  the  power 
of  the  court  to  enter  a  judgment  for  a  sum  larger  than  the 
verdict,  nor  constitutes  a  reason  for  exercising  that  power 
where  no  other  reason  exists. r,r'  But  that  power  will  be 
exercised  where  the  defendant's  infringement  was  deliber- 
ate and  intentional,  even  though  it  may  have  been  com- 
mitted under  an  erroneous  opinion  of  the  plaintiff's 
rights; 56  or  where  the  defendant  acted  in  bad  faith,  or 
has  been  stubbornly  litigious,  or  has  caused  unnecessary 
trouble  and  expense  to  the  plaintiff; 57  but  not  merely 
because  the  defendant's  defence  was  so  extensive  as  to 
require  great  expenditure  to  overcome  it.58 

§  568.  Increased  damages  may  properly  be  awarded  by 
a  court,  where  it  is  necessary  to  award  them  in  order  to 
prevent  a  defendant  infringer  from  profiting  from  his 
own  wrong,  whether  that  wrong  was  intentional  or  was 
unwitting.  The  power  conferred  by  the  statute  is  general. 
It  is  not  confined  to  awarding  punitive  damages,  but  is  to 
be  exercised  " according  to  the  circumstances  of  the  case."59 
Among  the  circumstances  of  patent  cases  is  the  fact  that 

"  Topliff  v.  Topliff,  145  U.  S.      Electrical    Inst.    Co.    v.    Empire 

174,  1892;  Kuhn  v.  Lock-Stub  Electrical  Inst.  Co.,  155  F.  R. 
Check  Co.,  165  F.  R.  445,  1908.        301,   1907;  Consolidated  Rubber 

55  Guyon  v.  Serrell,  1  Blatch.  Tire  Co.  r.  Diamond  Rubber  Tire 
246,  1847.  Co.,  226  F.  R.  455,  1915. 

56  Russell   v.   Place,   9   Blatch.  "Welling  v.  La  Bau,  35  F.  R. 

175,  1871;  Peek  v.  Frame,  9  303,  1888;  Brown  Bag  Filling 
Blatch.  194,  1871.  Machine  Co.  v.  Drohn,  175  F.  R. 

»  Day  v.  Woodworth,  13  How-      576,  1910. 
ard,  372,  1851;  Teese  v.  Hunting-  59  Revised     Statutes,     Section 

don,  23  Howard,  2,  1859;  Weston      4919. 


630  D  \M  \(iES  [chap.    XIX. 

the  profits,  which  defendants  derive  from  their  infringe- 
ments, are  often  larger  than  the  actual  damages  which 
those  infringements  cause  plaintiffs  to  sustain.  If,  in 
such  a  case,  the  defendanl  is  forced  to  pay  no  more  than 
the  actual  damages,  it  is  clear  that  he  will  have  derived 
advantage  from  his  own  wrong.  It  would  be  an  imperfect 
system  of  law  that  would  thus  put  a  premium  upon  its 
own  violation.  Exemplary  or  increased  damages  are  not 
forfeitures,  and  liability  to  be  compelled  to  pay  such 
damages,  does  not  give  an  infringer  any  right  to  withhold 
his  testimony,  as  tending  to  criminate  himself.60 

It  has  been  held  in  the  seventh  circuit  that  when  the 
defendant  has  not  only  infringed  but  has  also  copied  the 
plaintiff's  structure  so  closely  that  he  is  chargeable  with 
unfair  competition,  damages  for  the  unfair  competition 
may  be  recovered  in  the  infringement  suit  regardless  of 
the  citizenship  of  the  parties.  The  reason  given  is 
that  the  unfair  competition  is  an  aggravation  of  the  in- 
fringement.61 

§  569.  A  verdict  for  actual  damages  cannot  be  averted 
by  evidence  that  the  defendant  was  ignorant  of  the  exist- 
ence of  the  patent  at  the  time  he  infringed.62  All  infringers 
have  constructive  notice  of  all  patents,  because  all  letters 
patent  are  recorded  in  the  Patent  Office.  There  is  no  more 
injustice  involved  in  the  rule  that  infringers  are  bound 
to  take  notice  of  patents,  than  there  is  in  the  rule  that 
buyers  of  land  are  bound  to  take  notice  of  the  real  estate 
records,  or  in  the  rule  that  all  citizens  are  bound  to  take 
notice  of  the  laws  of  their  country.  The  amount  of  pe- 
cuniary injury  which  an  infringement  causes  a  patentee, 

60  Masseth  v.  Johnston,  59  F.  R.  62  Emerson  v.  Simm,  6  Fisher, 

613,  1894.  281,    1873;   Timken   v.   Olin,   41 

63  Ludwigs  v.  Payson  Mfg.  Co.,  F.  R.  170,  1890. 
206  F.  R.  60,  1913. 


CHAP.    XIX.]  DAMAGES  631 

is  not  affected  by  the  fact  that  the  infringer  did  not  know 
of  the  existence  of  the  patent  which  he  infringed.  The 
fact,  however,  that  the  infringer  has  deliberately  and  per- 
sistently infringed  the  patent  after  its  validity  has  been 
established  is  sufficient  to  cause  all  doubts  on  question  of 
fact  to  be  resolved  against  him.63 

§  570.  Neither  counsel  fees  nor  any  other  expenses  inci- 
dent to  litigation,  can  be  included  in  a  verdict  for  actual 
damages  in  a  patent  case.64  There  is  no  more  reason  for 
allowing  a  successful  plaintiff  to  recover  such  items,  than 
there  is  for  giving  a  similar  recovery  to  a  successful  defend- 
ant. Certain  expended  fees  may  be  recovered  as  costs  by 
either;  but  no  expenditures  or  costs  can  be  recovered  as 
damages. 

§  571.  Interest  should  be  allowed  on  royalties,  from  the 
time  those  royalities  ought  to  have  been  paid,  in  all  cases 
where  a  royalty  is  the  measure  of  the  plaintiff's  damages.65 
In  such  a  case  the  damages  are  liquidated  at  such  time  as 
the  royalty  would  have  been  due,  if  the  defendant  had 
elected  to  purchase  instead  of  to  n  ringe  the  right  to  use 
the  invention  in  suit.  No  interest  is  due  on  damages  meas- 
ured otherwise  than  by  a  royalty,  because  such  damages 
are  unliquidated  until  they  are  ascertained  by  an  action,66 

83  Consolidated  Rubber  Tire  Blatch.  222,  1854;  Goodyear  v. 
Co.  p.  Diamond  Rubber  Co.,  232  Bishop,  2  Fisher,  162,  1861; 
F.  R.  475,  1916.  Locomotive  Safety  Truck  Co.  v. 

84  Day  v.  Woodworth,  13  How-  Pennsylvania  Railroad  Co.,  2 
ard,  373,  1851;  Tee&ev.  Hunting-  F.  R.  682,  1880;  McNeely  v. 
don,  23  Howard,  8,  1859;  Philip  v.  Williames,  96  F.  R.  982,  1899; 
Nock,  17  Wallace,  462,  1873;  Munising  Paper  Co.  v.  American 
Whittemore  v.  Cutter,  1  Gallison,  Sulphite  Pulp  Co.,  228  F.  R.  700, 
429,  1813;  Stimpson  i\  The  Rail-  1915;  contra,  Diamond  Stone 
roads,  1  Wallace,  Jr.,  164,  1847;  Sawing  Machine  Co.  v.  Brown, 
Holbrook  v.  Small,  3  Bann.  &  Ard.  155  F.  R.  753,  1907. 

626,  1878.  88  Gilpin  v.  Consequa,  3  Wash- 

85  McCormick    v.    Seymour,    3      ington,  194,  1813. 


ChV2  DAMAGES  [CHAP.    MX. 

excepl  whore  the  method  of  measurement  is  as  definite 
and  conclusive  as  it  is  in  the  case  of  a  royalty.67 

£  571a.  Damages  lor  infringement  of  a  design  patent  are 
fixed  by  a  special  statute,  at  the  minimum  amount  of  two 
hundred  and  fifty  dollars,  and  at  a  maximum  amount 
enough  larger  than  that,  to  equal  the  total  profit  made  by 
the  infringer  upon  the  infringing  article  or  articles  made  or 
sold  by  him.6S  The  statute  does  not  state  whether  the  two 
hundred  and  fifty  dollars  is  recoverable  from  an  infringer 
for  each  of  his  infringements,  or  is  recoverable  only  once 
for  all  of  his  infringements  of  each  claim  infringed,  or  is 
recoverable  only  once  for  all  of  his  infringements  of  each 
patent  infringed,  or  is  recoverable  only  once  for  all  of  his 
doings  of  a  particular  kind,  even  where  those  doings 
infringed  more  than  one  patent  of  the  plaintiff.  No  court 
has  put  the  first  of  these  constructions  on  the  statute; 
but  each  of  the  others  has  apparently  been  approved  by 
at  least  one  judicial  tribunal.60 

In  order  to  recover  under  this  statute,  the  plaintiff  must 
show  that  the  defendant  knew  of  the  plaintiff's  design,  and 
knew  of  the  plaintiff's  patent,  or  at  least  knew  of  facts 
which  put  him  upon  his  inquiry  for  that  patent; 70  and 
that  he  knew  that  the  design  was  applied  to  the  infringing 
article,  without  the  license  of  the  owner  of  the  patent.71 
The  last  point  of  knowledge  will  be  presumed  against  the 
maker;  but  as  against  a  dealer  whose  infringement  con- 
sisted in  selling,  or  exposing  for  sale,  articles  manufactured 

87  Creamer  v.  Bowers,  35  F.  R.  Hogg,  97  F.  R.  791, 1899;  Frank  v. 

207,  1888.  Geiger,  121  F.  R.  126,  1903. 

68  24  Statutes  at  Large,  Ch.  105,  70  Smith  v.  Stewart,  55  F.  R. 

p.  387.  4S4,  1893;  Lichtenstein  v.  Strauss, 

89  Lowell  Mfg.  Co.fl.Whittall,  71  166  F.  R.  319,  1908. 

F.  R.  515,  1895;  Hogg  v.  Gimbel,  71  Anderson  v.  Pittsburgh  Lum- 

94   F.   R.   518,    1899;  Gimbel   v.  ber  Co.,  47  F.  R.  68,  1891. 


CHAP.    XIX.]  DAMAGES  633 

by  another,  it  must  be  proved.72  The  profits  recoverable 
are  measured  by  the  extent  to  which  the  infringement 
has  contributed  to  the  entire  profits  on  the  article  to 
which  the  design  is  applied  ; 72ff  and  the  statute  is  constitu- 
tional, although  it  provides  for  recoveries  which  are  in 
the  nature  of  penalties,  and  provides  that  those  recoveries 
may  be  obtained  upon  a  bill  in  equity  for  an  injunction, 
as  well  as  by  an  action  at  law.73  Where  the  complainant 
in  a  bill  in  equity,  waives  any  recovery  of  more  than  two 
hundred  and  fifty  dollars,  a  decree  will  be  entered  for  that 
amount,  without  an  inquiry  into  the  particular  extent  of 
the  defendant's  infringement.71  But  where  there  is  no 
such  waiver,  the  case  will  be  referred  to  a  master  to  ascer- 
tain whether  and  how  much  the  defendant's  profits  ex- 
ceeded two  hundred  and  fifty  dollars.75 

72  Anderson  v.  Saint,  46  F.  R.  73  Untermeyer    v.    Freund,    58 

765,   1891;  Gimbel  v.  Hogg,  97  F.  R.  211,  1893. 

F.  R.  791,  1899.  74  Pirkl  v.  Smith,  42  F.  R.  410, 

72a  Bush  &  Lane  Piano  Co.  v.  1890. 

Becker    Bros.,    234    F.    R.    79,  75  Ripley  v.  Elson  Glass  Co.,  49 

1916.  F.  R.  927,  1892. 


CHAPTER  XX 


ACTIONS   IN    EQUITY 


572.  Jurisdiction  of  equity  in  pat- 

ent causes. 

573.  Jurisdiction  of  equity  to  as- 

sess and  decree  damages. 
573a.   Jurisdiction  of    equity  of 
infringing   articles   before 
and  after  decree. 

574.  The  complainant. 

575.  The  defendant. 

576.  Original  bills. 

577.  The  title  of  the  court. 

578.  The  introductory  part. 

579.  The  stating  part. 

580.  The  prayer  for  relief. 

581.  The  interrogating  part  under 

former  practice. 

582.  The  prayer  for  process,  for- 

mer practice. 

583.  The  signature. 

584.  Oaths  to  bills. 

585.  Bills    to    perpetuate    testi- 

mony. 
585a.  Bills  to  abridge  the  freedom 
of    speech    and    of     the 
press. 

586.  Amendments  to  bills,  when 

allowed. 

587.  Amendments  to  bills,  when 

necessary. 

588.  Demurrers,    pleas    and    an- 

swers. 

589.  Pleas  in  equity. 

634 


590.  Arguments  upon  pleas,  and 

replications  to  pleas. 

590a.  Particulars  of  the  claim  or 
defence — the  subject  gen- 
erally considered. 

5906.  Application  of  the  practice. 

590f.  Interrogatories, — the  sub- 
ject generally  considered. 

590o\  What  interrogatories  are 
proper. 

591.  Defences  in  equity  cases. 
591a.  Conspiracy  by  plaintiff   in 

restraint    of    trade    as    a 
defence. 
5916.  Counterclaims  and  set-offs 
in  answer. 

592.  Non-jurisdiction  of  equity. 

593.  The  same  subject  continued. 

594.  Non-jurisdiction   in   equity, 

how  set  up  as  a  defence. 

595.  Prior  adjudication  at  law  is 

not  necessary  to  jurisdic- 
tion in  equity. 

596.  Laches. 

597.  Laches,  how  set  up. 

598.  The  first  of  the  twenty-seven 

defences. 

599.  The  second  defence. 

600.  The  third  defence. 

601.  The  fourth  defence. 

602.  The    fifth    and    sixth    de- 

fences. 


CHAP.    XX.] 


ACTIONS    IN    EQUITY 


035 


603. 
604. 
605. 

606. 
607. 

COS. 

609. 

010. 
611. 
612. 
613. 

614. 
615. 
616. 
617. 
618. 
619. 
620. 
621. 
622. 
622a 
623. 
624. 

625. 
626. 

627. 
628. 

629. 

630. 


631. 


The  seventh  defence. 

The  eighth  defence. 

The  ninth  and  tenth  de- 
fences. 

The  eleventh  defence. 

The  twelfth  defence. 

The  thirteenth  defence. 

The  fourteenth  defence. 

The  fifteenth  defence. 

The  sixteenth  defence. 

The  seventeenth  defence. 

The  eighteenth  defence. 

The  nineteenth  defence. 

The  twentieth  defence. 

The  twenty-first  defence. 

The  twenty-second  defence. 

The  twenty-third  defence. 

The  twenty-fourth  defence. 

The  twenty-fifth  defence. 

The  twenty-sixth  defence. 

The  twenty-seventh  defence. 

,  The  twenty-eighth  defence. 

Replications. 

Subordinate  bills  in  aid  of 
original  bills. 

Supplemental  bills. 

Bills  in  the  nature  of  supple- 
mental bills. 

Bills  of  revivor. 

Bills  in  the  nature  of  bills 
of  revivor. 

Bills  of  revivor  and  supple- 
ment. 

Leave  of  court  to  file  supple- 
mental bills,  and  bills  in 
the  nature  of  supplemental 
bills. 

Demurrers,  pleas,  and  an- 
swers to  supplemental 
bills,  and  to  bills  in  the 


nature  of  supplemental 
bills. 

632.  Hearings. 

633.  Interlocutory  hearings. 

634.  Questions  of  law  arising  on 

hearings. 

635.  Questions  of  fact  arising  on 

hearings. 

636.  Evidence  in  support  of  the 

bill. 

637.  Evidence  in  support  of  de- 

fences. 

638.  Testimony. 

640.  Depositions  taken  in  other 

cases. 

641.  Documentary  evidence. 

642.  Trial    by    jury    in    equity 

cases. 

643.  Hearings  by  masters  in  chan- 

cery. 

644.  Interlocutory  decrees. 
644a.  Appeals  from  interlocutory 

decrees. 

645.  Petitions  for  rehearings. 

646.  Rehearings  for  matter  appar- 

ent on  the  record. 

647.  Rehearings    on    account    of 

newly  discovered  evi- 
dence. 

648.  Supplemental    bills    in    the 

nature  of  bills  of  review. 

649.  Final  decrees. 

650.  Bills  of  review. 

651.  Bills    of   review   to    correct 

errors  apparent  on  the 
pleadings  or  final  decree. 

652.  Bills  of  review  to  introduce 

evidence  discovered  after 
the  entry  of  the  final  de- 
cree. 


636  ACTIONS    IN    EQUITY  [CHAP.    XX. 

653.  Bills  in  the  nature  of  bills  of  <>.r)7.  Certificates    of    division    of 

review.  opinion. 

(i54.  Appeals.  657a.  ( Jertificates  and  writs  of  cer- 
655.  Hearings  on  appeals.  tiorari. 

(ioG.  Decisions  on  appeals.  (i57/>.  Costs. 

§  572.  Jurisdiction  in  equity,  in  patent  litigation,  is 
conferred  upon  the  same  courts  that  are  authorized  to 
exercise  jurisdiction  at  law  in  that  branch  of  jurispru- 
dence.1 The  two  kinds  of  jurisdiction  are  kept  as  distinct 
in  those  courts  as  if  they  were  conferred  upon  different 
tribunals.  Equitable  relief  cannot  be  had  in  any  action 
at  law;  and  legal  relief  cannot  be  had  in  any  action  in 
equity,  except  as  incidental  to  some  equitable  relief 
granted,  or  at  least  rightfully  prayed  for,  therein.  The 
only  function  of  actions  at  law  in  patent  cases  is  to  give 
damages  for  past  infringements  of  patents.  The  principal 
function  of  actions  in  equity  in  such  cases  is  to  restrain 
future  infringements  of  patents  by  means  of  the  writ  of 
injunction.2  In  every  case  where  an  injunction  is  proper, 
a  court  of  equity,  in  order  to  avoid  a  multiplicity  of  actions, 
will  take  an  account  of  the  profits  which  the  defendant 
derived  from  infringing  the  complainant's  patent,  and  will 
compel  the  defendant  to  pay  that  amount  to  the  complain- 
ant. And  equity  has  jurisdiction,  independent  of  any 
injunction  or  right  to  an  injunction,  to  grant  this  relief 
relevant  to  profits,  in  all  patent  cases  wherein  some  im- 
pediment prevents  a  resort  to  remedies  purely  legal,  or 
wherein  special  circumstances  render  the  remedy  obtain- 
able by  an  action  at  law  difficult,  inadequate,  or  incom- 
plete.3 

1  Judicial    Code,    Section    24;  Truman  v.  Holmes,  87  F.  R.  744, 
Section  379  of  this  book.  1898. 

2  AUington  &  Curtis  Mfg.  Co.  »  Root  v.  Railway  Co.,  105  U.  S. 
v.   Booth,   78   F.   R.   879,    1897;  189,  1881. 


CHAP.    XX. j  ACTIONS    IN    EQUITY  ().^7 

§  573.  Wherever  equity  has  jurisdiction  to  decree  an 
account  of  the  defendant's  profits,  it  also  has  jurisdiction 
to  assess  the  damages  which  the  complainant  sustained 
on  account  of  the  defendant's  infringement.1  Having 
ascertained  the  amount  of  both,  if  the  profits  are  found 
to  exceed  the  damages,  the  court  will  enter  a  decree  for 
their  recovery,  and  will  do  nothing  further  about  the  dam- 
ages.5 Where  the  accounting  shows  no  such  profits,  but 
does  show  such  damages,  the  court  will  enter  a  decree  for 
the  amount  of  the  latter.6  Where  the  accounting  shows 
both  profits  and  damages,  and  shows  the  latter  to  equal 
or  exceed  the  former,  a  decree  will  be  entered  for  the 
amount  of  the  damages/  or  for  any  sum  not  exceeding 
three  times  that  amount.8 

In  assessing  damages,  equity  follows  the  law,9  and  is 
guided  by  the  rules  and  principles  which  are  set  forth  in 
Chapter  XIX  of  this  book.  But  where  damages  are  meas- 
ured by  a  royalty,  only  the  earned  portion  of  the  royal t y 
should  be  assessed;  for  if  the  royalty  assessed  is  one  which 
covers  the  future  life  of  the  patent,  its  recovery  would  au- 
thorize a  continuance  of  the  defendant's  doings,  and  thus 
defeat  an  injunction,  and  perhaps  oust  the  jurisdiction  of 
equity,  and  so  eventuate  in  a  reversal  of  the  decree  by  an 
appellate  court.10 

4  Revised  Statutes,  Section  8  Revised  Statutes,  Section 
4921.  4919;  Covert  v.  Sargent,  42  F.  R. 

5  Emighy.  Railroad  Co.,  OF.  R,  298,  1890;  Beach  v.  Hatch,  153 
283,  1881.  F.  R.  763,  1907. 

c  Marsh  v.  Seymour,  97  U.  S.  9  Bancroft  v.  Acton,  7  Blatch. 

348,  1877.  506,     1870;    Locomotive    Safety 

7  Star  Salt  Caster  Co.  v.  Cross-  Truck  Co.  v.  Pennsylvania  Rail- 
man,  4  Bann.  &  Ard.  566,  1879;  road  Co.,  2  F.  R.  682, 1880. 
Child  v.  Iron  Works,  19  F.  R.  259,  10  Bragg  v.  City  of  Stockton,  27 
1884;  Simpson  v.  Davis,  22  F.  R.  F.  R,  509,  1886;  but  see  Camp- 
444,  1884.  bell  Printing  Press  Co.  v.  Man- 


638  actions  i\  EQurn  [chap.  xx. 

§  573a.  It  has  been  held  that,  when  a  prima  facie  case 
of  infringement  has  been  made  out  on  a  motion  for  a 
preliminary  injunction,  the  court  has  power  to  impound 
in  the  custody  of  the  marshal  or  of  a  receiver  such  infring- 
ing articles  as  may  be  in  the  possession  of  the  defendant, 
but  that  the  court  cannot  order  them  destroyed  before 
interlocutory  decree.11 

§  574.  The  complainant  in  an  action  in  equity  for  an 
infringement  of  a  patent,  may  be  the  holder  of  the  com- 
plete title  to  that  patent  in  the  territory  where  the  in- 
fringement occurred.  Where  the  legal  title  resides  in  one 
person  and  the  equitable  title  in  another,  both  should 
generally  join  in  such  an  action.12  But  the  holder  of  the 
legal  title  may  be  dispensed  with  as  co-complainant,  where 
the  circumstances  of  the  case  are  such  that  a  decree  against 
the  equitable  owner  would  clearly  be  pleadable  against 
the  holder  of  the  legal  title; 13  and  the  holder  of  an  equita- 
ble title  may  be  dispensed  with,  where  his  interest  is  con- 
fined to  a  share  of  the  proceeds  of  the  patent,14  or  where 
he  has  given  to  the  holder  of  the  legal  title  a  written  power 
to  bring  and  prosecute  the  suit  alone.15 

Where  an  equitable  owner  brings  an  action  in  equity 
in  the  name  of  the  holder  of  the  legal  title  alone,  the  de- 
fendant may,  by  means  of  a  motion  to  the  court,  compel 
the  equitable  owner  to  become  a  co-complainant  in  his 
own  name,  if  that  action  is  necessary  to  the  protection  of 
the  rights  of  the  defendant.16     But  where  a  defendant 

hattan  Ry.  Co.,  49  F.  R.  930,  l3  Littlefield  v.  Perry,  21  Wal- 

1892.  lace,  222,  1874. 

11  Underwood   Typewriter   Co.  14  Rude  v.  Westcott,  130  U.  S. 

v.  Elliott-Fisher  Co.,   156  F.  R.  152,  1899. 

588,  1907;  see  Section  644,  post;  15  Union  Trust  Co.  v.  Walker 

In  re  Steiner,  195  F.  R.  299,  1912.  Electric  Co.,  122  F.  R.  815,  1903. 

,2  Stimpson  v.  Rogers,  4  Blatch.  16  Patterson  v.  Stapler,  7  F.  R. 

336,  1859.  210,  1881. 


CHAP.    XX. |  ACTIONS    IN    EQUITY  639 

moves  to  make  a  stranger  to  a  suit  co-complainant  therein, 
on  the  ground  that  he  has  an  equitable  interest  in 
the  matter  involved,  the  motion  will  be  overruled, 
if  the  person,  so  sought  to  be  brought  in,  files  in  the 
case  a  disclaimer  of  all  interest  in  the  subject  of  the 
litigation.17 

No  grounds  for  a  suit  in  equity  to  enjoin  the  use  by  a 
defendant  of  complainant's  invention  lies  in  favor  of  an 
applicant  whose  patent  has  not  issued,  even  though  the 
defendant  has  fraudulently  secured  a  patent  to  himself  for 
the  same  invention.18 

§  575.  The  defendant  in  an  action  in  equity  for  an 
infringement  of  a  patent,  may  generally  be  any  person  or 
private  corporation  connected  with  that  infringement. 
Questions  relevant  to  the  liability  of  public  corporations 
to  such  actions,  and  relevant  to  the  respective  liability  of 
joint  infringers  when  sued  in  equity,  and  indeed  relevant 
to  numerous  points  in  the  subject  of  parties,  are  explained 
and  answered  in  the  chapter  on  courts,  parties,  and  causes : 
the  seventeenth  chapter  in  this  book. 

§  576.  Anciently  an  original  bill  in  equity  consisted  of 
nine  parts.  1.  The  Title  of  the  Court.  2.  The  Introduc- 
tion. 3.  The  Stating  Part.  4.  The  Charging  Part.  5.  The 
Confederacy  Part.  6.  The  Jurisdiction  Part.  7.  The 
Interrogatories.  8.  The  Prayer  for  Relief.  9.  The 
Prayer  for  Process.  By  Equity  Rule  25  of  the  Equity 
Rules  in  effect  February  1,  1913,  it  is  provided  as  follows: 

"Hereafter  it  shall  be  sufficient  that  a  bill  in  equity 
shall  contain,  in  addition  to  the  usual  caption: 

"First,  the  full  name,  when  known,  of  each  plaintiff 
and  defendant,  and  the  citizenship  and  residence  of  each 

17  Graham  v.  Mfg.  Co.,  11  F.  R.  1S  Standard   Scale   &   Foundry 

148,  1880.  Co.  v.  McDonald,  127  F.  R.  709, 

1904. 


640  \<Tlo\s    i\    EQUITY  [CHAP.    XX. 

party.  If  any  party  be  under  any  disability  that  fact 
shall  be  stated. 

"Second,  a  short  and  plain  statement  of  the  grounds 
upon  which  the  court's  jurisdiction  depends. 

"Third,  a  short  and  simple  statement  of  the  ultimate 
facts  upon  which  the  plaintiff  asks  relief,  omitting  any 
mere  statement  of  evidence. 

"Fourth,  if  there  are  persons  other  than  those  named 
as  defendants,  who  appear  to  be  proper  parties,  the  bill 
should  state  why  they  are  not  made  parties — as  that  they 
are  not  within  the  jurisdiction  of  the  court,  or  cannot  be 
made  parties  without  ousting  the  jurisdiction. 

"Fifth,  a  statement  of  and  prayer  for  any  special  relief 
pending  the  suit  on  final  hearing,  which  may  be  stated 
and  sought  in  alternative  forms.  If  special  relief  pending 
the  suit  be  desired  the  bill  should  be  verified  by  the  oath 
of  the  plaintiff,  or  someone  having  knowledge  of  the  facts 
upon  which  such  relief  is  asked." 

Therefore  by  the  specific  provisions  of  the  rule,  the  only 
parts  of  the  ancient  bill  which  now  remain  are  the  title 
of  the  court,  the  introduction,  the  stating  part,  and  the 
prayer  for  relief.  The  subject  of  specific  interrogatories 
and  the  procedure  for  obtaining  discovery  by  means  of 
them  has  been  preserved  in  the  Federal  Equity  procedure, 
however,  but  by  means  of  a  separate  proceeding.19  In 
fact  prior  to  February  1,  1913,  the  plaintiff  might  omit 
the  confederacy  part,  the  charging  part  and  the  jurisdic- 
tion part  which  usually  stated  that  the  acts  complained 
of  were  contrary  to  equity  and  that  the  plaintiff  was  with- 
out any  remedy  at  law.20 

§  577.  The  title  of  the  court,  at  the  beginning  of  a  bill, 
should  be  in  the  same  form  as  at  the  beginning  of  a  declara- 

ia  Sections  590c  and  590</.  -°  Former  Equity  Rule  21. 


CHAP.    XX. J  ACTIONS   IN    EQUITY  641 

tion.21  It  is  technically  unscientific  to  entitle  a  bill  in 
the  name  of  the  case,  because  until  the  bill  is  filed  there  is 
no  such  case  pending.  But  such  a  title  is  convenient,  in 
order  to  show  at  a  glance  who  are  the  parties;  and  con- 
venience may  properly  outweigh  technical  nicety.  It  is 
therefore  exceptional  to  see  a  bill  that  is  not  entitled  in 
the  name  of  the  case. 

§  578.  The  introductory  part  contains  a  formal  address 
to  the  judges  of  the  court  in  which  the  bill  is  to  be  filed, 
together  with  the  names,  residences,  and  the  citizenship 
of  the  parties.22 

§  579.  The  stating  part  of  a  bill  in  equity,  though  differ- 
ing in  form  from  the  statement  of  the  cause  of  action  in  a 
declaration  at  law,  agrees  with  the  latter  in  substance, 
except  in  the  following  particulars :  It  must  state  that  the 
complainant  fears  and  has  reason  to  fear,  future  infringe- 
ment by  the  defendant.23  It  need  not  state  past  infringe- 
ment, where  it  states  a  specific  reason  for  fearing  future 
infringement.24  It  may  state  infringements  which  were 
committed  before  the  complainant  obtained  his  title, 
provided  that  title,  when  obtained,  covered  the  right  of 
action  for  those  infringements.  Where  the  bill  prays  for 
a  preliminary  injunction,  its  stating  part  must  set  forth 
one  or  more  of  the  grounds  for  that  relief,  which  are  ex- 
plained in  the  chapter  on  injunctions.25  Where  profits 
are  sought  to  be  recovered,  it  must  plainly  aver  that  prof- 

21  Section  422  of  this  book;  24  Canton  Steel  Roofing  Co. 
Equity  Rule  25.  v.  Kanneberg,    51     F.     R.    599, 

22  Equity  Rule  25.  1892. 

23  Edison  Phonograph  Co.  v.  25  Parker  v.  Brant,  1  Fisher,  58, 
Hawthorne  &  Sheble  Mfg.  Co.,  1850;  American  Bell  Telephone 
108  F.  R.  630,  1901;  Weston  Co.  v.  Southern  Telephone  Co., 
Electrical  Inst.  Co.  v.  Vallee  34  F.  R.  803,  1888;  Peters  v. 
Bros.  Electrical  Co.,  145  F.  R.  Chicago  Biscuit  Co.,  142  F.  R. 
534,  1906.  779,  1905;  Equity  Rule  25. 


642  ACTIONS   IN    EQUITY  [CHAP.    XX. 

its  were  realized  by  the  defendant  on  account  of  the  stated 
infringement,-1'  and  that  the  infringements  complained  of, 
or  some  of  them  took  place  within  six  years  before  the 
filing  of  the  bill.27  Where  either  damages  or  profits  or 
both  are  sought  to  be  recovered  the  bill  must  show  proper 
marking  under  Section  4900  of  the  Revised  Statutes  or 
proper  notice  to  the  defendant,  otherwise  no  recovery 
can  be  had  except  for  infringements  after  suit  com- 
menced.28 The  filing  of  the  bill  is  notice.29  The  bill 
should  also  allege  infringements  in  all  places  where  they 
have  taken  place,  since  if  infringements  merely  in  the  dis- 
trict of  suit  are  alleged,  the  plaintiff  will  be  confined  to 
them  in  his  proof  of  damages  and  profits.30  It  need  not 
aver  that  any  damage  was  incurred  by  the  complainant, 
if  the  action  is  brought  for  an  injunction  only,  or  for  an 
injunction  and  an  account  of  the  defendant's  profits. 
Where  a  former  decree  is  invoked  against  the  defendant, 
it  must  be  stated  in  the  bill,  according  to  the  rule  of  equity 
pleading  in  that  behalf.31  But  it  must  not  state  any  con- 
sent decree  which  has  been  made  against  any  stranger  to 
the  suit.32 

A  bill  in  equity  as  in  the  case  of  a  declaration  at  law 
must  show  compliance  with  Section  4886  of  the  Revised 
Statutes,  that  is,  it  must  show  the  requirement  as  to  the 
two  years'  use,  that  the  invention  had  not  been  previously 

26  Wirt  v.  Hicks,  46  F.  R.  71,  29  Maimen  v.  Union  Special 
1891.                                                    Mach.  Co.,  165  F.  R.  440,  1908. 

27  See  Section  435.  30  Gray  v.  Grimberg,  159  F.  R. 
Contra,     Fichel      v.     Barthel,      138,  1908. 

173  F.  R.  489,  1909.  31  Bradley  Mfg.   Co.  v.  Eagle 

See  Section  435.  Mfg.  Co.,  57  F.  R.  985,  1893. 

28  Westinghouse  Electric  &  Mfg.  32  Western  Electric  Co.  v.  Wil- 
Co.  v.  Condit  Electric  &  Mfg.  Co.,  liams-Abbott  Electric  Co.,  83 
159  F.R.  154, 1908;  Crier ».  Innes,  F.  R.  842,  1897;  Haarmann  v. 
170  F.  R.  324,  1909.  Lueders,  109  F.  R.  327,  1901. 


CHAP.    XX.]  ACTIONS   IN   EQUITY  643 

patented  or  described  in  a  printed  publication,  that  the 
patentee  is  the  original  inventor,  and  also  of  course  title 
in  the  complainant.33  Furthermore,  it  must  allege  that  the 
patent  was  issued  in  the  name  of  the  United  States  and 
under  the  seal  of  the  Patent  Office  and  that  it  was  signed 
by  the  Commissioner  of  Patents.34  It  need  not,  however, 
negative  abandonment  as  that  is  a  defence.3"'  It  must 
appear  that  the  patent  was  properly  executed  by  the  au- 
thorized officers  of  the  government,  although  profert  of  the 
patent  obviates  the  necessity  of  such  an  allegation  and 
indeed  of  an  allegation  as  to  anything  appearing  on  the 
face  of  the  patent.36 

The  foregoing  paragraph  states  the  rules  in  force  at 
any  rate  prior  to  the  Equity  Rules  promulgated  No- 
vember 4,  1912.  Since  that  time  several  judges  have  held 
that  under  Rule  25,  providing  that  the  bill  shall  contain 
"el  short  and  simple  statement  of  the  ultimate  facts  upon 
which  the  plaintiff  asks  relief,  omitting  any  mere  state- 
ment of  evidence,"  it  is  sufficient  merely  to  allege  the  is- 
suance of  the  patent  and  the  chain  of  title.37 

The  purport  of  the  patent  is  properly  embodied  in  a  bill 
of  complaint,  by  making  profert  therein,  of  the  patent 
on  which  the  bill  is  based.38    But  the  particular  claims 

"American  Graphophone  Co.  Stromberg   Motor   Devices   Co., 

v.  National  Phonograph  Co.,  127  205   F.    R.    158,    1913;    General 

F.  R.  349,  1904;  Moss  v.  M'Con-  Bakelite  Co.  v.  Nikolas,  207  F.  R. 

way-Torley  Co.,  144  F.  R.  128,  111,  1913. 

1906.  Contra    Maxwell    Steel    Vault 

34  Eastwood  v.  Cutler-Hammer  Co.  v.  National  Casket  Co.,  205 
Mfg.  Co.,  148  F.  R.  718,  1906.  F.  R.  515,  1913. 

35  Fichtel  v.  Barthel,  173  F.  R.  38  International  Terra  Cotta 
489,  1909.  Lumber  Co.  v.  Maurer,  44  F.  R. 

38  Fichtel  v.  Barthel,  173  F.  R.      618,     1890;     Heaton-Peninsular 

489,  1909.  Button-Fastener  Co.  v.  Schlocht- 

37  Zenith    Carburetor    Co.    v.      meyer,  69  F.  R.  592,  1895;  Chin- 


fill  ACTIONS    IN    EQIUTY  [CHAP.    XX. 

of  the  patent  which  the  complainant  intends  to  prosecute 
in  the  case,  must  be  specified  by  their  numbers  in  the 
stating  part  of  the  bill  of  complaint. w 

If,  however,  the  bill  charges  infringement  of  "the 
claims  "  of  the  patent  in  suit,  it  will  be  construed  to  charge 
infringement  of  all  the  claims,  and  the  complainant  can- 
not be  required  to  amend  the  bill  specifying  the  claims 
with  respect  to  which  infringement  is  claimed.'10  Neither 
will  he  be  required  to  amend  by  stating  the  parts  of  de- 
fendant's structure  that  are  alleged  to  infringe.41 

If  the  bill  is  brought  by  an  owner  of  a  patent  for  the 
benefit  of  a  licensee  it  should  so  state  as,  if  the  bill  ap- 
parently proceeds  for  the  interest  of  the  owner  alone,  no 
damages  can  be  recovered  on  behalf  of  the  licensee.410 

Where  a  plurality  of  defendants  are  sued  for  infringing 
a  patent,  the  bill  ought  to  state  that  the  infringement  was 
joint,42  though  it  has  also  been  held  that  the  point  may 
properly  be  left  to  implification.43 

nock  v.  Paterson,  P.  &  S.  Tel.  Co.,  40  Morton   Trust   Co.    v.    Am. 

110  F.  R.   199,   1901;  Fowler  v.  Car  &  Foundry  Co.,  129  F.  R. 

City  of  New  York,  121  F.  R.  748,  916,     1904;     but    see     Marconi 

1903.  Wireless  Telegraph   Co.   v.   New 

39  Russell    v.    Winchester    Re-  England     Navigation    Co.,     191 

peating  Arms  Co.,  97  F.  R.  634,  F.  R.  194,  1911. 

1899;  Eastwood  v.  Cutler-Hammer  41  Morton   Trust   Co.    v.    Am. 

Mfg.  Co.,  148  F.  R.  718,  1906.  Car  &  Foundry  Co.,  129  F.  R. 

Contra,     Foundation     Co.     v.  916,  1904. 

O'Rourke  Eng.  Const.  Co.,   171  iia  Brookfield  v.  Novelty  Glass 

F.  R.  425,  1909,  holding  that  a  Mfg.  Co.,  170  F.  R.  960,  1909; 

bill  of  particulars  may  be  ordered ;  National    Metal    Weather    Strip 

also  for  rule   in  second   circuit,  Co.   v.   Bredin,    186  F.   R.   490, 

see  General  Electric  Co.  v.  Am.  1911. 

Brass  &  Copper  Co.  (holding  that  42  Diamond  Match  Co.  v.  Ohio 

the  claims  relied  upon  may  be  Match  Co.,  80  F.  R.  118,  1897. 

specified  outside  of  the  bill),  209  43  Indurated  Fibre  Co.  v.  Grace, 

F.  R.  237,  1911.  52  F.  R.  127,  1892. 


CHAP.    XX. |  ACTIONS    IX    EQ11TY  t)4.r) 

§  580.  The  prayer  for  relief  should  be  both  special  and 
general.44  The  special  part  should  ask  for  a  preliminary 
injunction,  and  for  a  permanent  injunction,  and  for  an 
account  of  the  defendant's  profits,  and  for  an  assessment 
of  the  complainant's  damages,  and  for  an  increase  of  those 
damages,  and  for  costs.  The  prayer  for  general  relief 
should  be  in  the  ordinary  form  of  prayers  of  that  kind. 

§  581.  Although  the  interrogating  part  of  the  bill  has 
been  abolished  by  the  Supreme  Court,44"  since  the  fourth 
edition  of  this  book,  and  its  purpose  effected  by  the  prac- 
tice of  filing  specific  interrogatories  separately  from  the 
bill,  the  general  principles  of  interrogatories  have  not  been 
affected  and  therefore  the  discussion  of  the  subject  as 
found  in  the  fourth  edition  is  substantially  repeated,  the 
consideration  of  the  present  practice  being  left  for  later 
sections  of  this  edition.446 

The  interrogating  part  of  the  bill  was  designed  and 
adapted  to  secure  from  the  defendant  such  admissions 
or  statements  as  would  obviate  the  necessity  for  evidence 
to  support  those  allegations  of  the  bill  which  related  to 
his  doings.45  The  character,  but  not  the  extent  of  those 
doings,  could  properly  be  the  subject  of  an  interrogating 
part  of  a  bill  in  equity  in  a  patent  case.46  If  infringement 
was  denied  the  defendant  could  not  be  compelled  to  state 
in  answer  to  interrogatories  how  many  of  the  infringing 
articles  he  has  made.47 

Where  an  interrogating  part  contained  more  than  one 
interrogatory,   the   interrogatories  were   required   to   be 

44  Equity  Rule  25.  F.  R.  899,   1891;  48  F.  R.  239, 
44°  Equity  Rules  25  and  58.  1891. 

446  See      Sections     590c      and  4a  Keller  0.  Strauss,  88  F.   R. 

59(W.  517,  1898. 

45  Coop  v.  Physical  Institute,  47  47  Lovell  Mfg.  Co.  v.  Automatic 

Wringer  Co.,  124  F.  R.  971,  1903. 


646  ACTIONS   IN    EQUITY  [CHAP.    XX. 

divided  from  each  other,  and  consecutively  numbered, 
and  a  note  required  to  be  put  at  the  foot  of  the  bill  speci- 
fying which  of  those  numbered  interrogatories  each  de- 
fendant was  required  to  answer.48  Where  the  complaiinu  1 1 
in  his  bill  waived  the  oath  which  otherwise  the  de- 
fendant was  entitled  to  make  to  his  answer,  or  if  he  re- 
quired such  an  oath  to  be  made  only  to  the  answer  of 
certain  specified  interrogatories;  the  answer  of  the  de- 
fendant, though  it  was  in  fact  under  oath,  was  not  evi- 
dence in  his  favor  on  any  point  not  covered  by  such 
specified  interrogatories,  unless  the  case  was  heard  on  bill 
and  answer  only.49 

§  582.  The  prayer  for  process  formerly  had  to  contain 
the  names  of  all  the  defendants  who  were  mentioned  in 
the  introductory  part  of  the  bill,50  and  if  any  of  them  were 
known  to  be  minors,  or  otherwise  under  guardianship, 
that  fact  had  to  be  stated  in  the  prayer  for  process.51  No 
mention  of  these  requirements  is  made  in  the  rules  of  1913. 

§  583.  The  bill  must  be  signed  by  one  or  more  solicitors 
of  record.52  The  former  requirement  was  for  the  signa- 
ture of  "  counsel."  52a 

§  584.  An  oath  of  the  truth  of  the  bill  must  be  appended 
to  such  a  document,  if  it  prays  for  a  preliminary  injunc- 
tion.53 Such  an  oath  is  to  be  made  by  the  complainant 
or  someone  having  knowledge  of  the  facts  upon  which 
the  application  for  the  injunction  is  based.54  Where  the 
complainant  is  a  corporation,  the  bill  may  be  verified 
by  an  officer  of  the  corporation  who  knows  it  to  be  true; 
or  if  no  such  officer  possesses  that  knowledge,  it  may  be 

48  Former  Equity  Rules  41  and  51  Former  Equity  Rule  23. 
42.  52  Equity  Rule  24. 

49  Former  Equity  Rule  41.  62<I  Former  Equity  Rule  24. 
60  Goebel    v.    Supply    Co.,    55  53  Equity  Rule  25. 

F.  R.  827,  1893.  s4  Equity  Rule  25. 


CHAP.    XX.]  ACTIONS   IN    EQUITY  647 

sworn  to  by  any  agent  or  attorney  who  does.55  Where 
there  is  a  plurality  of  complainants,  the  bill  may  be  suf- 
ficiently verified  by  the  oath  of  one  of  them,  and  be  signed 
by  him  without  any  other  signature,  except  the  counter- 
signature of  lawyer  who  represents  all  the  complainants.56 

If  the  bill  prays  for  a  preliminary  injunction,  and  if  its 
affiant  can  swear  only  on  information  and  belief  to  the  de- 
fendant's doings,  and  to  their  character  as  infringements, 
the  application  should  be  fortified  by  affidavits  of  persons 
who  know  what  the  defendant  has  done,  and  by  affidavits 
of  experts  who  can  intelligently  testify  to  the  character 
of  those  doings,  as  compared  with  what  appears  to  be 
covered  by  the  complainant's  patent.  Where  the  com- 
plainant can  positively  swear  to  part  of  the  allegations  of 
his  bill,  and  can  swear  to  the  residue  only  on  information 
and  belief,  the  bill  should  state  the  first  class  of  facts  posi- 
tively, and  the  second  class  on  information  and  belief 
alone;  and  the  oath  should  clearly  discriminate  between 
the  two  classes  in  that  behalf.  It  is  not  sufficient  for  the 
oath  to  state  that  the  material  averments  of  the  bill  are 
true;57  nor  to  state  that  those  allegations  are  true  which 
render  an  injunction  necessary  and  proper; 58  because  such 
a  form  of  oath  leaves  it  uncertain  which  allegations  the 
affiant  had  in  mind.  But  positive  oaths  ought  to  be  based 
on  positive  knowledge.  It  is  much  to  be  feared  that  many 
persons  make  affidavits  to  bills  and  other  papers,  without 
much  reflection  upon  the  statements  they  contain,  or 
upon  the  wrong  of  falsehood,  or  upon  the  pains  and 
penalties  of  perjury.    The  better  lawyers  will  guard  the 

55  Bank  of  Orleans  v.  Skinner,  57  Sauvinet     v.     Poupono,     14 

9  Paige  (N.  Y.),  305,  1841.  Louisiana,  87,  1839. 

60  Cimiotti    Unhairing    Co.    v.  58  Hebert  v.  Joly,  5  Louisiana, 

American  Fur  Refining  Co.,  120  50,  1832. 
F.  R.  674,  1903. 


(.Is  action's   ix    EQUITY  [CHAP.    w. 

conscience  of  a  clienl  a1  this  point,  while  the  inferior  ones 
are  sometimes  more  apt  to  mislead  than  to  protect  it. 
Affidavits  to  bills,  and  indeed  all  other  affidavits  to  be 
used  in  any  civil  cause,  in  any  circuit  or  district  court  of 
the  United  States,  may  be  taken  before  a  conmiissioner 
of  the  District  Court  for  the  district;  M  or  before  any  notary 
public  of  either  of  the  States  or  Territories,  or  of  the  Dis- 
trict of  Columbia.60 

§  585.  A  bill  to  perpetuate  testimony  tending  to  show  a 
particular  patent  to  be  void,  may  be  filed  and  prosecuted  in 
any  United  States  District  Court;61  but  a  bill  brought  into 
court  to  establish  non-infringement  of  a  particular  patent 
by  the  complainant  will  not  be  entertained.62  Nor  will  a 
court  of  equity  restrain  an  action,  brought,  or  to  be 
brought,  in  another  court,  for  infringement  of  a  patent.63 
Neither  can  a  bill  be  partly  based  on  a  patent,  and  partly 
on  unfair  competition  before  the  patent  was  in  existence.64 
But  a  bill  may  properly  pray  that  the  defendant  be  re- 
strained from  infringing  a  patent  and  also  from  applying 
the  designating  name  of  the  patented  article  to  a  spurious 
imitation  thereof,  while  the  patent  is  in  force.65 

§  585a.  Several  bills  of  complaint  have  been  filed,  and 
other  proceedings  instituted  in  courts  of  equity,  since  1885, 

59  Revised     Statutes,     Section  Strait  v.  Harrow  Co.,  51  F.  R. 

945.  819,  1892. 

60 19  Statutes  at  Large,  Ch.  304,  «3  Kelley    v.    Ypsilanti    Dress- 

p.  206.  Stay  Mfg.  Co.,  44  F.  R.  19,  1890; 

61  Revised     Statutes,     Section  Germain  v.  Wilgus,  67  F.  R.  601, 

866;    New    York    &    Baltimore  1895;  American  School  Furniture 

Coffee    Polishing     Co.    v.    New  Co.  v.  Sauder  Co.,  106  F.  R.  732, 

York    Coffee    Polishing    Co.,    9  1901. 

F.  R.  578,   1881;   11  F.  R.  813,  "Ball   &   Socket   Fastener   v. 

1882.  Cohn,  90  F.  R.  664,  1898. 

«2  Celluloid   Mfg.   Co.   v.   Vul-  65Adam  v.  Folger,   120  F.   R, 

canite  Co.,  13  Blatch.  375,  1876;  264,  1903. 


CUM'.    XX. |  ACTIONS    IN    KQUITY  649 

to  restrain  patentees  from  publishing  statements  favorable 
to  their  patents,  and  unfavorable  to  alleged  infringers 
thereof,  or  to  restrain  alleged  infringers  of  patents  from 
publishing  statements  unfavorable  to  those  patents,  and 
favorable  to  such  alleged  infringers.  In  each  of  those 
cases,  the  court  was  practically  asked  to  abridge  the  free- 
dom of  speech  and  of  the  press.  The  first  two  applications 
of  the  kind  were  made  to  Judge  Coxe  early  in  1886;  but 
both  of  them  were  denied  by  him.66  The  next  application 
was  denied  by  Justice  Bradley  and  Judge  McKennan, 
in  October  of  the  same  year.67  The  fourth  application 
met  the  same  fate  at  the  hands  of  Judges  Colt  and  Car- 
penter in  the  following  November.68  Two  more  such 
applications  were  denied  in  December,  1890,  by  Judges 
Woods  and  Jenkins  respectively.69  On  the  contrary, 
one  such  application  was  granted  by  Judge  Blodgett  in 
1888 ;70  and  one  other  was  ordered  to  be  granted  in  1903, 
by  Judges  Wallace  and  Lacombe.71  Other  cases  where 
the  question  has  been  decided  are  found  in  the  note.72 

A  distinction  exists  between  the  six  cases  in  which  the 
applications  were  denied,  and  the  two  cases  in  which  they 
were  granted.  That  distinction  consists  in  the  fact  that  in 
the  two  cases,  the  judges  were  convinced  that  the  state- 
ments sought  to  be  restrained,  were  not  believed  to  be 

88  Chase  v.  Tuttle,  27  F.  R.  110,  70  Emack  v.  Kane,  34  F.  R.  46, 

1886 ;  Tuttle  v.  Matthews,  28  F.  R.  1888. 

98,  1886.  7l  Adriance,  Piatt  &  Co.  v.  Na- 

87  Kidd  v.  Horry,  28  F.  R.  773,  tional  Harrow  Co.,  121  F.  R.  827, 
1886.  1903. 

88  Baltimore  Car- Wheel  Co.  v.  n  Dittgen  v.  Racine  Paper 
Bemis,  29  F.  R.  95,  1886.  Goods  Co.,  164  F.  R.  84,  1905; 

89  Fougeres    v.    Murbarger,    44  Dittgen  v.  Racine  Paper  Goods 
F.    R.    292,    1890;    International  Co.,  164  F.  R,  85,  1908. 
Tooth-Crown  Co.  v.  Carmichael, 

44  F.  R  350,  1890. 


660  ACTIONS    IN    EQUITY  [CHAP.    XX. 

i  rue  by  those  who  had  made  them.  But  Justice  Bradley 
explained,  in  the  case  decided  by  him  and  Judge  Mc- 
Kennan,  that  a  court  of  equity  lias  do  jurisdiction  to 
prevent  persons  from  printing  and  publishing,  and  thai  the 

jurisdiction  of  the  court  is  not  affected  by  the  opinion  the 
judge  may  entertain  on  the  question  whether  the  printing 
and  publishing  sought  to  be  restrained,  was  done  in  sin- 
cerity or  was  done  in  malice.  For  some  reason,  this  ex- 
planation of  Justice  Bradley,  was  not  met  by  any  state- 
ment or  argument  in  the  decision  of  Judge  Blodgett, 
or  in  that  of  Judges  Wallace  and  Lacombe. 

This  question  of  the  jurisdiction  of  a  court  of  equity  to 
abridge  the  freedom  of  speech  and  of  the  press,  was  de- 
cided in  the  negative  by  the  Supreme  Court  of  the  United 
States,73  on  a  day  about  midway  between  the  two  deci- 
sions of  Judge  Coxe  in  the  same  direction.  That  Supreme 
Court  decision  was  not  attended  to  in  any  of  the  pub- 
lished opinions  which  support  the  affirmative  conclusion; 
but  it  was  cited  by  Judge  Woods  in  his  negative  decision, 
and  was  held  by  Judge  Jenkins  to  settle  the  question  in 
the  negative.74 

§  586.  Amendments  to  bills  may  be  made  as  a  matter 
of  course,  and  without  costs,  at  any  time  before  the  de- 
fendant has  responded  thereto,  but  if  such  amendment  be 
filed  after  any  copy  has  issued  from  the  clerk's  office  the 
plaintiff  must  at  his  own  cost  furnish  to  the  solicitor  of 
record  of  each  defendant  a  copy  of  the  bill  as  amended.75 
After  an  answer  is  put  in,  the  complainant  may  obtain 
an  order  from  the  court  or  judge  to  amend  his  bill  upon 
payment  of  costs,  or  without  payment  of  costs,  as  the 

73  Francis  v.  Flinn,  118  U.  S.  Tooth-Crown  Co.  v.  Carmichael, 
385,  1886.  44  F.  R.  350,  1890. 

74  Fougeres    v.    Murbarger,    44  7S  Equity  Rule  28. 
F.    R.    292,    1890;    International 


CHAP.    XX.]  ACTIONS    IX    EQUITY  651 

judge  may  in  his  discretion  direct.70  In  fact  it  is  provided 
that  the  court  may  at  any  time,  in  furtherance  of  justice 
upon  such  terms  as  may  be  just,  permit  any  process,  pro- 
ceeding, pleading  or  record  to  be  amended.77  Amendments 
applied  for  at  or  after  the  hearing  of  a  case,  are  not  regu- 
lated by  the  Equity  Rules,  but  are  allowed  or  refused, 
according  to  the  sound  discretion  of  the  court.78  But 
that  discretion  is  governed  by  precedents,  and  those  prec- 
edents indicate  that  amendments,  at  or  after  the  hearing, 
will  be  allowed  only  where  the  bill  is  found  to  be  defective 
in  proper  parties,  or  in  its  prayer  for  relief,  or  in  the  omis- 
sion or  misstatement  of  some  fact  or  circumstance  con- 
nected with  the  substance  of  the  case,  but  not  forming 
the  substance  itself,  or  where  it  is  necessary  for  the  com- 
plainant to  take  issue  with  new  matter  in  the  answer.79 
Where  a  litigation  has  been  conducted  precisely  as  it 
would  have  been  if  the  proper  amendment  had  been  made 
before  any  pleading  to  the  bill  was  filed,  the  court  will 
allow  that  amendment  to  be  filed  even  after  the  hearing, 
and  thus  make  the  pleadings  conform  to  what  the  course 
of  the  litigation  assumed  them  to  be.80 

§  587.  A  bill  needs  amendment  when  the  defendant's 
demurrer,  plea,  or  answer,  or  under  the  present  Equity 
Rules  his  answer  or  motion  to  dismiss  points  out  a  material 
fault  therein,  or  when  the  complainant  otherwise  dis- 
covers a  material  error  or  omission  which  may  be  cured, 
or  when  the  defendant's  answer  contains  statements  to 

76  Equity  Rules  19  and  28.  80  The  Tremolo  Patent,  23  Wal- 

77  Equity  Rule  19.  lace,  527,  1874;  Vattier  v.  Hinde, 
78Neale  v.  Neals,  9  Wallace,  9,      7  Peters,  273,  1833;  Duponti  v. 

1869.  Mussy,  4  Washington,  128,  1821; 
79  Shields  v.  Barrow,  17  Howard,  New  York  Sugar  Co.  v.  Sugar 
144,  1854;  Dancel  v.  United  Co.",  20  F.  R.  505,  1884;  New  De- 
Shoe  Mach.  Co.,  120  F.  R.  839,  parture  Bell  Co.  v.  Bevin  Mfg. 
1903.  Co.,  64  F.  R.  866,  1894. 


652  ACTIONS    IN    EQUITY  [CHAP.    XX. 

which  it  is  necessary  to  plead  by  way  of  confession  and 
avoidance.81  No  reply  by  way  of  confession  and  avoid- 
ance could  be  made  in  a  replication  in  equity,82  under  the 
practice  prevailing  prior  to  the  present  Equity  Rules,  and 
replications  of  all  kinds  have  been  abolished  by  the  present 
rules.  Where  the  plea  or  answer  set  up  new  matter,  to 
which  the  complainant  wished  to  reply  by  way  of  traverse, 
the  general  replication  was  the  proper  pleading  to  file  for 
t  hat  purpose.83  Replications  have,  however,  as  stated  been 
wholly  abolished  and  now  the  only  pleadings  are  the  bill 
and  answer.83" 

§  588.  Defences  could  formerly  be  made  to  a  bill  in 
equity  for  infringement  of  a  patent,  by  a  demurrer,  or  by 
a  plea,  or  by  an  answer;  or  by  a  demurrer  to  part  and  a 
plea  to  another  part,  and  an  answer  to  the  residue;84  or 
by  a  demurrer  to  part,  and  a  plea  to  the  residue;  or  by  a 
demurrer  to  a  part,  and  an  answer  to  the  residue;  or  by  a 
plea  to  a  part,  and  an  answer  to  the  residue.85  They  can 
now  be  made  only  by  answer  and  motion  to  dismiss.85" 

It  may  be  here  noted  that  courts  have  always  been 
loath    to  decide    questions   of   validity86   and  infringe- 

81  Wilson  v.  Stolley,  4  McLean,  Emmons  Bros.  Co.,  185  F.  R. 
275,  1847.  814,   1911;  Sanitary  Metal  Tile 

82  Former  Equity  Rule  45.  Co.  v.  New  York  Metal  Ceiling 

83  Former  Equity  Rule  66.  Co.,  188  F.  R.  441,  1910;  Gilbert 
83(1  Equity  Rules  29  and  31.  Mfg.  Co.  v.  Post  &  Lester  Co., 

84  Former  Equity  Rule  32.  189   F.    R.    81,    1911;   Luten   v. 

85  Story's  Equity  Pleading,  Sec-  Dover  Construction  Co.,  189 
tion437.  F.    R.    405,    1911;    Burrowes    v. 

85<I  Equity  Rule  29.  Carrom-Archarena  Co.,  190  F.  R. 

88  Jackes-Evans    Mfg.    Co.    v.  204,    1911;    Rose    Mfg.    Co.    v. 

Hemp  &  Co.,  140  F.  R.  254,  1905;  Whitehouse  Mfg.  Co.,  193  F.  R. 

Gaines  v.  Alabama  Consol.  Coal  &  69,  1911;  Card  v.  Standard  Coal 

Iron  Co.,   173  F.  R.  303,   1909;  &  Coke  Co.,  202  F.  R.  351,  1912; 

Lange  v.  McGuin,  177  F.  R.  219,  Acme   Steel   Goods   Co.   v.   Am. 

1910;    Matteawan    Mfg.    Co.    v.  Metal  Fasteners  Co.,  206  F.  R. 


CHAP.  XX. j  ACTIONS    IN    EQUITY  653 

merit s7  on  demurrer,  and  that  it  is  seldom  that  a  defendant 
has  succeeded  on  those  issues  by  such  method  of  procedure. 
The  number  of  cases  to  the  contrary  is  negligible.  The 
demurrer,  or  its  equivalent,  the  motion  to  dismiss, 
is  not  helped  by  the  fact  that  the  patent  has  been 
held  void  in  other  jurisdictions  in  suits  against  other 
parties.88 

The  nature  and  operation  of  demurrers  and  answers  in 
equity  practice,  are  so  well  understood  by  the  profession, 
that  little  need  be  said  about  them  in  this  book,  or  about 
their  equivalents  as  provided  by  the  present  Equity  Rules. 
But  defences  by  plea  may  bear  a  longer  review,  because 
even  before  those  rules  they  had  largely  gone  out  of  use 
in  the  Federal  courts  and  their  principles  been  partly 
forgotten  by  the  members  of  the  bar,  since  even  the 
former  Equity  Rules  authorized  nearly  every  defence  to 
be  made  in  an  answer,  that  formerly  required  a  plea  for 
its  interposition.89  But  those  rules  did  not  authorize  any 
defendant  to  make  a  particular  defence  in  a  plea,  and  if 
unsuccessful  there,  to  make  it  over  again  in  an  answer.90 
Such  a  plan,  if  allowed,  would  have  enabled  a  defendant 
whose  plea  was  overruled  as  stating  no  defence  at  law,  to 
argue  that  question  again  on  the  final  hearing;  and  it 
would  have  enabled  a  defendant,  whose  plea  was  proved 
to  be  false  in  fact,  to  contest  that  issue  again  on  new  testi- 
mony taken  in  pursuance  of  an  answer.  Though  pleas 
in  bar  were  not  necessary  in  equity  cases  in  the  Federal 
courts,  except  under  rare  circumstances,  they  were  some- 

478,    1913;    Krell    Auto    Grand  authorities),  169  F.  R.  424,  1909. 

Piano  Co.  v.  Story  &  Clark  Co.,  **  Voightmann    v.    Seely,     176 

207    F.    R,    946,    1913;   Interna-  F.  R.  371,  1909. 

tional  Mausoleum  Co.  v.  Sievert,  89  Former  Equity  Rule  39. 

213  F.  R.  225,  1914.  *  Hubbell  r.  De  Land,  14  F.  R. 

87  Neidich    v.    Edwards    (citing  475,  1882. 


654  ACTIONS   IN    EQUITY  [CHAP.    XX. 

t  imes  made  useful  in  saving  time,  labor,  costs,  and  expense. 
It  is,  on  these  accounts,  expedient  to  remind  the  reader 
of  the  general  nature  and  operation  of  those  pleadings, 
before  explaining  their  special  application  under  the 
former  Equity  Rules  to  actions  in  equity  for  infringements 
of  patents. 

§  589.  A  plea  in  equity  is  a  sworn 91  pleading,  which  al- 
leges that  some  one  fact,  not  stated  in  the  bill,  is  true;  or 
that  some  one  statement  of  fact  in  the  bill,  is  not  true;  or 
that  some  one  fact,  which  the  bill  states  is  not  a  fact,  is  a 
fact  nevertheless.  A  plea  of  the  first  kind  sets  up  new 
matter  by  way  of  confession  and  avoidance,  and  is  properly 
named  an  affirmative  plea.92  This  is  the  only  sort  of  plea 
in  equity  which  was  recognized  in  the  time  of  Chancellor 
Bacon.93  A  plea  of  the  second  kind  traverses  some  one 
statement  of  fact  in  the  bill,  and  is  therefore  properly 
called  a  negative  plea.94  This  sort  of  plea  was  established 
by  Chancellor  Thurlow,  and  thereafter  became  a  fully 
recognized  part  of  equity  pleading  in  England  and  in  the 
United  States.95  A  plea  of  the  third  kind  states  some  fact 
to  be  true  which  the  bill  seeks  to  impeach.96  It  is  similar 
to  an  affirmative  plea  in  respect  that  it  sets  up  matter  out- 
side of  that  upon  which  the  bill  is  based;  and  it  is  similar  to 
a  negative  plea,  in  that  it  contradicts  some  one  statement 
of  fact  in  the  bill.  It  may  therefore  be  properly  named  a 
composite  plea.  Where  the  single  point  of  fact  stated  or 
denied  in  a  plea,  depends  for  its  truth  or  error  upon  the 
comparative  construction  of  two  documents,  the  plea  is 

01  Former  Equity  Rule  31.  ;'4  Daniell's  Chancery  Practice, 

92  Daniell's  Chancery  Practice,      Vol.  1,  Ch.  XV,  Section  1. 

Vol.  1,  Chap.  XV,  Section  1.  95  Story's  Equity  Pleading,  Sec- 

93  Beame's   General   Orders   of     tion  668. 

the    High    Court    of    Chancery,  %  Daniell's  Chancery  Practice, 

26.  Vol.  1,  Ch.  XV,  Section  1. 


CHAP.    XX.]  ACTIONS   IN   EQUITY  655 

bad  and  must  be  overruled;  because  such  a  question  of 
construction  is  a  question  of  law.97 

But  by  Rule  29  of  the  Equity  Rules,  effective  February  1, 
1913,  demurrers  and  pleas  are  abolished.  The  rule  further 
provides  that:  " Every  defence  in  point  of  law  arising 
upon  the  face  of  the  bill,  whether  for  misjoinder,  non- 
joinder, or  insufficiency  of  fact  to  constitute  a  valid  cause 
of  action  in  equity,  which  might  heretofore  have  been 
made  by  demurrer  or  plea,  shall  be  made  by  motion  to 
dismiss  or  in  the  answer;  and  every  such  point  of  law  going 
to  the  whole  or  a  material  part  of  the  cause  or  causes  of 
action  stated  in  the  bill  may  be  called  up  and  disposed  of 
before  final  hearing  at  the  discretion  of  the  court.  Every 
defence  heretofore  presentable  by  plea  in  bar  or  abate- 
ment shall  be  made  in  the  answer  and  may  be  separately 
heard  and  disposed  of  before  the  trial  of  the  principal 
case  in  the  discretion  of  the  court.  If  the  defendant 
move  to  dismiss  the  bill  or  any  part  thereof,  the  motion 
may  be  set  down  for  hearing  by  either  party  upon 
five  days'  notice,  and,  if  it  be  denied,  answer  shall  be 
filed  within  five  days  thereafter  or  a  decree  pro  confesso 
entered." 

The  effect  of  this  rule  is  to  leave  the  answer  as  the  means 
of  defence  against  all  matters  which  might  formerly  have 
been  presented  by  demurrer,  plea  or  answer,  or  any  or  all 
of  them.  In  addition,  if  the  defence  is  on  a  point  of  law 
arising  upon  the  face  of  the  bill,  the  defendant  has  the 
option  of  making  a  motion  to  dismiss  the  bill  without 
having  first  interposed  it  in  his  answer.  If  the  defence  is 
as  to  a  point  of  law  arising  on  the  face  of  the  bill  the  point 
may  be  called  up  and  disposed  of  before  final  hearing  at 
the  discretion  of  the  court.  If  the  defence  consists  of  mat- 
ter formerly  presentable  by  plea  in  bar  or  abatement  it 
"  Lowery  v.  Aluminum  Co.,  56  F.  R.  405,  1893. 


656  ACTIONS    IN    EQUITY  [CHAP.    XX. 

may  be  separately  heard  and  disposed  of  before  the  trial 
of  the  principal  case  in  the  discretion  of  the  court: 

As  a  matter  of  pleading  it  has  therefore  become  unneces- 
sary to  determine  how  the  twenty-eight  defences  enumer- 
ated or  any  of  them,  may  be  interposed  except  as  between 
a  motion  to  dismiss  and  an  answer.  It  is  important,  how- 
ever, to  know  just  which  of  them  might  formerly  have 
been  presented  by  plea  in  bar  or  abatement  in  order  that 
the  parties  may  know  whether  or  not  a  particular  defence 
may  be  separately  heard  before  the  trial  of  the  principal 
case  and  thus  dispense  with  the  labor  and  expense  of  pre- 
paring for  the  trial  of  all  of  the  issues.  The  discussion  of 
the  yarious  methods  by  which  each  of  the  twenty-eight 
defences  could  be  interposed  as  found  in  the  fourth  edition 
of  this  book  is  therefore  retained  in  this  edition. 

§  590.  The  general  rule  of  equity  pleading  requires  that 
when  a  defendant  files  a  plea  to  a  bill  in  equity,  the  com- 
plainant should  satisfy  himself  whether  it  states  a  good 
defence  to  the  bill,  or  to  that  part  of  the  bill  to  which  it 
refers,  and  should  ascertain  whether  it  is  true  in  point  of 
fact.  If  he  is  sure  that  he  can  prove  it  to  be  false,  he  should 
take  issue  upon  it,98  by  filing  a  replication."  If  he  has 
any  ground  for  fear  that  the  plea  is  true  in  fact,  and  any 
ground  for  hope  that  it  is  bad  in  law,  his  true  course  is  to 
set  the  plea  down  for  argument;  10°  which  setting  down  is 
equivalent  to  a  demurrer  to  the  plea.101  If,  on  the  argu- 
ment, the  plea  is  held  to  state  no  fact  which  constitutes  a 
defence  to  the  bill,  or  to  any  part  thereof,  it  will  be  over- 
ruled, and  the  defendant  will  be  permitted  to  file  an  an.swer 

98  Former  Equity  Rule  33.  16  New  Jersey  Equity,  113,  1863; 

99  Darnell's  Chancery  Practice,  Korn  v.  Wiebusch,  33  F.  R.  51, 
Vol.  1,  Ch.  XV,  Section  V.  1887;  Burrell  v.  Hackley,  35  F.  R. 

'M  Former  Equity  Rule  33.  834,  1888;  Cook  v.  Sterling  Elec- 

101  Davison's  Ex'rs  v.  Johnson,      trie  Co.,  118  F.  R,  47,  1902. 


CHAP.    XX.]  ACTIONS    IN    EQUITY  057 

setting  up  whatever  other  defences  he  can.102  But  if  the 
plea  is  held  on  the  argument  to  state  a  good  defence  to 
the  bill,  or  to  that  part  of  the  bill  to  which  it  applies,  it 
will  be  allowed,  and  thereupon  the  complainant  may  ask 
leave  to  amend  his  bill ;  103  or  if  he  cannot  truly  amend  it 
so  as  to  make  it  avoid  the  plea,  he  must  file  a  replication.104 
Thereupon,  if  the  plea  is  proved  to  be  true,  the  fact  thus 
established  will  avail  the  defendant,  as  far  as,  in  law  and 
equity,  it  ought  to  avail  him;  105  and  if  the  plea  is  proved 
to  be  false,  the  defendant  must  file  an  answer  to  the  bill.106 
Only  one  defence  can  be  made  to  a  bill  in  a  plea,  unless  the 
court,  in  order  to  avoid  a  special  inconvenience,  gives  a 
special  permission  to  a  defendant  to  make  a  plurality  of 
defences  in  that  method  of  pleading.107  With  that  excep- 
tion, after  any  plea  has  been  overruled,  the  defendant,  if 
he  has  other  defences  to  interpose,  must  interpose  them  in 
an  answer.108  This  outline  of  the  principles  of  pleas  in 
equity  should  be  kept  in  mind  by  the  reader  while  perusing 
sundry  of  the  sections  which  follow,  for,  though  the  name 
has  been  abolished,  the  practice  has  been  retained  in  its 
essence,  it  merely  being  changed  sufficiently  to  relieve 

102  Former  Equity  Rule  34;  Power  Co.  v.  Nichols,  65  F.  R. 
Societe  Anonyme  v.  General  218,  1894;  American  Grapho- 
Electric  Co.,  97  F.  R.  606,  phone  Co.  v.  Edison  Phonograph 
1899.  Works,  72  0.  G.  1350,  1895. 

103  Edison  Electric  Light  Co.  v.  m  Dalzell  v.  Dueber  Mfg.  Co., 
Equitable  Life  Co.,  55  F.  R.  481,  149  U.  S.  326,  1893;  Westervelt  v. 
1893.  Library  Bureau,  118  F.  R.  824, 

104  Story's    Equity    Pleading,      1902. 

Section  697;  Daniell's  Chancery  107  Story's     Equity     Pleading, 

Practice,  Vol.   1,  Ch.  XV,  Sec-  Section  657;  Wheeler  v.  McCor- 

tion  V.  mick,  8  Blatch.  267,  1871;  Noyes 

105  Pearce  v.  Rice,  142  U.  S.  42,  v.  Willard,  1  Woods,  187,  1871; 
1891;  Horn  v.  Detroit  Co.,  150  Giant  Powder  Co.  v.  Nitro  Powder 
U.  S.  610,  1893;  Green  v.  Bogue,  Co.,  19  F.  R.  510,  1884. 

158  U.  S.  500,  1895;  Elgin  Wind  >°8  Former  Equity  Rule  34. 


058  &.CTIONS    IN    EQUITY  [CHAP.    XX. 

defendants  of  the  useless  expense  and  trouble  to  which 
they  were  formerly  often  subjected. 
^  590a.  With  the  radical  changes  in  the  system  of  equity 

pleading  introduced  by  the  Equity  Rules  promulgated 
in  1912,  whereby  among  other  things  it  was  required  that 
the  complaint  should  consist  merely  of  a  short  and  simple 
statement  of  the  ultimate  facts  upon  which  the  plaintiff 
asks  relief,  omitting  any  mere  statement  of  evidence,"" 
and  that  the  answer  should  in  short  and  simple  terms  set 
out  the  defences,  omitting  any  mere  statement  of  evidence 
and  specifically  admitting  or  denying  or  explaining  the 
facts  set  up  in  the  bill,110  came  the  necessity  for  the  means 
of  compelling  an  opponent  to  amplify  and  make  more 
definite  his  pleading,  winch  means  are  known  in  most 
code  jurisdictions  by  the  term  "bill  of  particulars."  The 
rule  relating  to  this  procedure  provides  that  a  further 
and  better  statement  of  the  nature  of  the  claim  or  defence, 
or  further  and  better  particulars  of  any  matter  stated  in 
any  pleading  may  in  any  case  be  ordered  upon  such  terms 
as  to  costs  and  otherwise  as  may  be  just.111  While  the 
expression  "bill  of  particulars"  is  not  found  in  the  rule, 
it  is  obvious  that  what  is  meant  by  the  rule  and  intended 
to  be  provided  for  is  the  bill  of  particulars  which  is  an 
adjunct  of  common  law  and  codes  pleading,  such  as 
equity  pleadings,  in  so  far  as  their  method  of  stating  facts 
is  concerned,  have  actually  become. 

A  typical  illustration  of  the  procedure  referred  to  is 
found  in  the  New  York  Code  of  Civil  Procedure  (Section 
481)  requiring  that  the  complaint  shall  consist  of  a  "plain 
and  concise  statement  of  the  facts  constituting  each  cause 
of  action  without  unnecessary  repetition  "  and  in  Section 
531  of  the  same  code  which  allows  the  court  to  "direct  a 

m  Equity  Rule  25.  1H  Equity  Rule  20. 

110  Equity  Rule  30. 


CHAP.    XX.]  ACTIONS    IN    EQUITY  659 

bill  of  particulars  "  of  the  claim  of  either  party  to  be  de- 
livered to  the  adverse  party.  Substantially  similar  pro- 
visions exist  in  most  of  the  other  code  States.  It  is  beyond 
the  scope  of  this  work  to  enter  into  any  detailed  discussion 
of  the  functions  of  a  bill  of  particulars,  but  it  should  be 
noted  that  the  procedure  can  only  be  used  as  a  means  of 
informing  the  party  instigating  it  of  the  precise  nature 
and  character  of  the  cause  of  action  or  defence  of  the  op- 
posite party.  The  bill  of  particulars  is  nothing  more  or 
less  than  an  amplification  of  general  allegations  set  up  in 
the  pleading  which  of  themselves  do  not  clearly  apprise 
the  opposite  party  of  the  nature  of  the  claim  or  defence  and 
thereby  create  such  a  situation  as  would  cause  surprise 
at  the  trial.  Such  being  the  function  of  the  bill  of  partic- 
ulars, the  fact  that  the  party  demanding  the  bill  was 
personally  familiar  with  the  facts  in  respect  to  which  the 
amplification  is  asked,  cannot  avail  him,  since  it  is  not 
ignorance  of  facts  which  entitles  a  party  to  a  bill  of  par- 
ticulars, but  ignorance  of  the  nature  of  the  claim  or  de- 
fence of  his  opponent.  For  further  consideration  of  the 
foregoing  principles,  reference  is  made  to  the  various  works 
on  pleading  and  practice  and  to  the  decisions  dealing  with 
the  subject  which  may  be  found  in  the  reports  of  all  the 
code  States. 

§  5906.  The  question  has  already,  at  this  writing,  been 
presented  as  to  whether  or  not  a  plaintiff  should  be  com- 
pelled to  fix  the  date  of  his  invention.  It  has  been  held 
in  the  Eastern  District  of  Pennsylvania,112  that  such  a 
requirement  would  not  be  made,  the  court  remarking 
that  it  "  would  be  an  innovation  in  pleading  and  a  dan- 
gerous one."  It  is  not  readily  apparent  where  the  danger 
lies  in  compelling  a  party  to  amplify  his  pleading  in  a 
patent  cause  to  the  extent  of  stating  when  his  invention 
"« Todd  v.  Whitaker,  217  F.  R.  319,  1914. 


660  ACTIONS    I.N    EQUITY  [CHAP.    XX. 

was  made  or  at  any  rate  what  date  he  expects  to  establish 
as  the  date  of  liis  invention.  This  appears  to  be  the  view 
of  the  Judges  of  the  District  Court  for  the  Southern  Dis- 
trict of  New  York,  where  the  announced  practice  is  to 
oblige  each  party  to  inform  the  other  of  the  respective 
date's  of  invention  which  they  intend  to  prove.  That  is, 
the  plaintiff  is  compelled  to  inform  the  defendant  of  the 
date  of  invention  of  the  patent  in  suit,  and  the  defendant 
is  obliged  to  inform  the  plaintiff  of  the  date  of  invention 
of  any  inventions  by  which  he  expects  to  anticipate  the 
plaintiff's  invention.113  In  carrying  out  the  interchange  of 
dates  it  may  be  noted  that  in  the  practice  in  the  Southern 
District  of  New  York  the  interchange  is  required  to  be 
simultaneous. 

A  bill  of  particulars  of  the  answer  will  not  be  required 
stating  in  whose  presence  an  alleged  prior  use  or  invention 
occurred,  but  a  defendant  will  be  required  to  give  a  de- 
scription of  the  thing  or  things  invented  or  used  or  the 
ingredients  of  a  composition  or  manufacture  or  of  a  proc- 
ess involved  or  practiced  in  its  production.113  The  latter 
requirement  is  presumably  subject  to  the  condition  that  a 
defendant  may  refuse  to  disclose  his  process  if  the  process 
is  secret.  Also  it  would  seem  that  these  requirements 
would  apply  to  the  defendant's  process  only  when  it  or  a 
similar  process  is  set  up  as  an  anticipation,  as,  if  the  pur- 
pose of  the  inquiry  is  to  ascertain  the  nature  of  the  infring- 
ing article  the  result  desired  should  properly  be  effected  by 
means  of  interrogatories  as  will  appear  in  the  discussion 
of  that  procedure. 

Another  respect  in  which  a  bill  of  particulars  has  been 
allowed  in  the  Southern  District  of  New  York  is  that  re-1 
quiring  the  defendant  to  name  the  patents  and  publica- 

113  A.  B.  Dick  Co.  v.  Underwood  Typewriter  Co.,  235  F.  R.  300, 
1916. 


(HAP.    XX. |  ACTIONS    IN   EQUITY  (><>1 

tions  that  would  be  offered  in  evidence  at  the  trial  of  the 
cause  to  support  the  contention  of  anticipation,  and  of 
those  so  offered,  on  which  of  them  the  defendant  will  rely 
at  the  trial  in  support  of  the  contention  of  anticipation.11'1 
This  requirement,  however,  is  subject  to  a  very  important 
modification.  As  Judge  Learned  Hand  says  in  Grand 
Rapids  Show  Case  Co.  v.  Strauss:  114  "It  is  impossible 
under  the  statute  to  prevent  the  defendant  from  plead- 
ing as  many  patents  in  anticipation  as  he  desires,  but  it 
is  obviously  preposterous  to  suppose  that  the  invention 
has  actually  been  patented  by  anything  like  the  number 
of  patents  impleaded.  I  recognize  that  the  question  of 
anticipation  is  bound  up  in  the  question  of  interpretation 
and  that  the  defendant  must  have  some  latitude  until  he 
knows  what  view  the  court  will  take  of  the  plaintiff's 
invention;  but  a  good  excuse  should  not  pardon  a  bad 
practice.  With  every  latitude  the  number  of  patents 
which  can  serve  as  anticipations  must  be  very  limited. 
It  is  proper,  therefore,  for  the  plaintiff  in  a  case  such  as 
this  to  call  on  the  defendant  to  declare  in  advance  which 
patents  he  seriously  contends  to  be  anticipations  and  the 
court  will  so  direct  the  defendant. ' '  Judge  Hand,  however, 
realizes  that  a  defendant  cannot  be  compelled,  by  impos- 
ing the  usual  penalty,  to  file  such  a  bill  of  particulars, 
and  therefore  states  as  follows:  "If  this  order  carries  no 
sanction,  however,  it  will  not  be  effective  and  the  only 
sanction  can  be  in  costs.  If  at  the  conclusion  of  the  case 
the  judge  who  tries  it  is  satisfied  that  the  defendants 
could,  without  any  reasonable  danger  to  themselves,  have 
cut  down  the  patents  on  which  they  rely  for  anticipa- 
tion below  the  number  given  to  the  plaintiff  in  response 

113  A.  B.  Dick  Co.  v.  Underwood  1M  Grand    Rapids   Show   Case 

Typewriter  Co.,  235  F.  R.  300,  Co.  v.  Strauss,  229  F.  R,  199, 
1910.  1915. 


<i()2  \<  PI0N8    i\    EQUJ  rv  [CHAP.    XX. 

to  the  order  of  the  court,  the  court  will,  however,  deprive 
the  defendant  of  costs  or  award  costs  against  defendants 
notwithstanding  their  success." 

A  contrary  view  is  taken  in  the  Northern  District  of 
Ohio  where  it  is  held  that  such  a  bill  of  particulars  may  be 
absolutely  required.115  It  does  not  appear,  however, 
in  the  decision  of  that  district,  what  can  be  done  in  case 
the  defendant  sets  forth  in  his  bill  of  particulars  all  the 
patents  and  publications  which  he  has  named  in  his  an- 
swer. Under  ordinary  circumstances  a  failure  to  file  a 
bill  of  particulars  as  ordered  debars  the  party  who  should 
file  it  from  giving  evidence  on  the  subject-matter  of  the 
bill,  but  it  is  obvious  that  such  a  penalty  could  not  be 
imposed  under  the  circumstances  now  being  considered. 

In  theory  there  appears  to  be  a  fundamental  objection 
to  requiring  a  defendant  to  specify  in  advance  what  pat- 
ents he  intends  to  rely  upon  at  the  trial.  That  objection 
is  that  it  is  distorting  the  principles  and  function  of  a  bill 
of  particulars.  When  a  defendant  sets  up  a  certain  number 
of  patents  as  anticipatory  of  the  patent  in  suit  with  the 
allegations  required  by  the  Revised  Statutes,  he  has  set 
forth  in  that  respect  a  pleading  which  is  perfectly  clear  on 
its  face.  Whether  or  not  he  ever  expects  to  be  able  to 
prove  the  allegations  of  his  pleading  is  an  entirely  differ- 
ent question  from  the  question  of  the  fulness  of  his  alle- 
gations. The  requirement  of  a  bill  of  particulars  in  such  a 
case  amounts  to  nothing  more  or  less  than  compelling 
the  defendant  to  cut  down  his  pleading  and  is  in  effect 
compelling  him  to  state  whether  or  not  he  really  means 
what  he  says.  However,  all  attorneys  conversant  with  the 
way  in  which  answers  are  prepared  in  patent  causes  will 
recognize  that  if  the  foregoing  statements  are  correct, 
theory  seriously  conflicts  with  practice  and  a  requirement 

115  Coulston  v.  H.  Franke  Steel  Range  Co.,  221  F.  R.  669,  1915. 


CHAP.    XX.]  ACTIONS   IN    EQUITY  663 

of  the  nature  of  that  in  the  Grand  Rapids  Show  Co.  case 
cannot  but  help  reduce  the  issues  in  almost  every  patent 
cause  to  their  proper  proportions. 

Another  requirement  that  has  been  imposed  in  the 
Southern  District  of  New  York  is  that  of  obliging  the  de- 
fendant to  set  forth  patents  and  publications  that  will 
be  offered  in  evidence  at  the  trial  of  the  cause  to  illustrate 
the  prior  state  of  the  art.113  The  propriety  of  this  require- 
ment, however,  either  in  theory  or  in  practice,  is  less  clear 
than  the  propriety  of  the  requirement  of  stating  what 
patents  and  publications  are  to  be  used  as  anticipations. 
When  used  as  anticipations  patents  and  publications  are 
the  things  themselves,  that  is,  the  documents  or  ultimate 
facts  which  are  to  be  proved  and  as  such  the  designation 
of  those  which  will  be  used  as  a  defense  might  properly 
come  within  the  scope  or  to  at  least  effect  the  object  of  a 
bill  of  particulars.  But  when  patents  and  publications 
are  used  to  show  the  prior  state  of  the  art  they  are  evidence 
and  nothing  more,  and  there  appears  to  be  no  justification 
in  equity  for  compelling  an  opponent  to  disclose  the  evi- 
dence which  he  will  use  to  establish  his  claim  or  defence. 
The  state  of  the  art  is  the  fact  to  be  proved,  and  it  would 
seem  to  be  properly  within  the  theoretical  scope  of  a  bill 
of  particulars  to  require  the  state  of  that  art  as  it  will 
be  shown  to  be  set  forth,  although  the  practical  difficulties 
of  doing  so  are  too  obvious  to  require  comment.  The  prior 
state  of  the  art  is  evidenced  by  the  sum  total  of  human 
knowledge  of  that  art,  and  what  that  knowledge  is,  is  the 
fact  to  be  proved.  That  knowledge  may  be  evidenced 
by  patents,  periodicals,  treatises,  dictionaries,  books, 
practices  of  a  particular  trade  or  community  of  people, 
or  in  brief,  by  showing  any  circiunstances  that  would  in- 

":iA.  B.  Dick  Co.  v.  Underwood  Typewriter  Co.,  235  F.  R.  300, 
1916. 


til.  I  LCTIONS    l\    EQUITY  [CHAP.    XX. 

dicate  a  knowledge  existing  at  the  time  involved  in  issue. 
To  require  the  defendant  to  produce  his  evidence  to  prove 
the  state  of  the  prior  :i,rt  even  though  he  is  required  to 
produce  only  patents  and  publications,  is  therefore  im- 
posing upon  him  a  requirement  thai  is  wholly  outside 
the  purpose  and  functions  of  the  bill  of  particulars. 

The  names  of  those  having  prior  knowledge  or  having 
made  prior  use  of  an  invention  in  suit  should  obviously 
be  required  on  the  same  terms  and  conditions  as  a  state- 
ment of  anticipating  patents  and  publications,  but  the 
names  of  the  witnesses  to  the  prior  knowledge  or  use 
should  not,  of  course,  be  required. 

In  the  Northern  District  of  Ohio  a  bill  of  particulars 
will  be  required  of  the  defendant  setting  forth  in  what 
respects  each  of  the  patents  pleaded  in  the  answer  dis- 
closes any  of  the  elements  or  combinations  of  elements 
described  in  the  letters  patent  in  suit,  and  also  in  what 
respect  they  negative  the  novelty  and  invention  of  the 
device  shown  and  described  in  complainant's  letters 
patent.115  The  bill  of  particulars,  however,  will  not  be 
granted  compelling  a  plaintiff  to  point  out  in  what  par- 
ticular part  of  an  infringing  machine  each  element  of  the 
patent  in  suit  is  embodied,  at  any  rate  in  ordinary  cases, 
although  a  plaintiff  probably  would  be  required  to  advise 
the  defendant  what  parts  of  the  defendant's  machine  in- 
fringed.116 The  case  holding  the  foregoing  proposition 
contains  an  instance  of  the  confusion  sometimes  existing 
between  the  functions  of  a  bill  of  particulars  and  those  of 
interrogatories. 

§  590c.  Prior  to  the  year  1913  when  the  present  equity 
rules  went  into  effect,  a  most  important  part  of  nearly 
every  bill  in  equity  consisted  of  the  specific  interrogatories 

1,5  Coulston  v.  H.  Franke  Steel  116  Gennert  v.  Burke  &  James, 

Range  Co.,  221  F.  R.  669,  1915.         Inc.,  231  F.  R.  998,  1916. 


CHAP.    XX. J  ACTIONS    IN    EQUITY  665 

which  were  in  fact  nothing  more  or  less  than  an  amplifi- 
cation of  the  charging  part  of  the  bill.  While  the  charging 
part  of  the  bill  has  been  eliminated  from  equity  practice 
by  Equity  Rule  No.  25,  the  specific  interrogatory  has  been 
retained,  with  the  additional  features,  however,  that  the 
defendant  may  now  have  the  benefit  of  interrogatories 
to  sustain  his  defence,  as  the  plaintiff  formerly  could  have 
the  benefit  of  them  to  sustain  his  bill,  and  with  the  further 
feature  that  interrogatories  have  been  taken  out  of  the 
pleadings  and  made  a  separate  and  distinct  procedure. 

It  should  be  added  that  there  is  one  further  change  of 
a  more  or  less  important  character  whereby  it  is  provided 
that  if  any  party  to  the  cause  is  a  public  or  private  cor- 
poration any  opposite  party  may  apply  for  an  order  al- 
lowing him  to  file  interrogatories  to  be  answered  by  any 
officer  of  the  corporation,  and  that  an  order  may  be  made 
for  the  examination  of  such  officer  as  may  appear  to  be 
proper  upon  such  interrogatories  as  the  court  or  judge 
shall  think  fit.  It  has  not  yet  been  decided,  nor  so  far 
as  the  reports  show,  has  the  question  been  raised  whether 
or  not  under  the  present  rule  interrogatories  may  be  ad- 
dressed directly  to  a  corporation  party  to  be  answered  by 
the  corporation  as  such,  without  the  application  for  such 
an  order  as  is  mentioned  in  the  foregoing  paragraph. 
In  principle  and  according  to  the  equity  practice  prior  to 
the  present  rules,  there  is  no  objection  to  such  a  method 
of  procedure  and  it  is  not  seen  how  the  present  rules  have 
changed  the  liability  of  a  party  corporation  to  answer 
interrogatories. 

Under  the  former  practice  every  bill  which  was  not 
a  pure  bill  for  discovery,  combined  the  functions  both 
of  a  bill  for  discovery  and  a  bill  for  substantive  relief. 
The  bill  for  discovery  could  be  and  frequently  was  filed 
against  a  corporation  as  is  likewise  the  case  with  the  com- 


666  A.CTIONS    r.\    EQUITY  [CHAP.    XX. 

bined  bill  for  discovery  and  substantive  relief.  The  inci- 
dents of  the  pure  bill  for  discovery  were,  however,  carried 
into  the  bill  for  combined  discovery  and  substantive  relief, 
and  as  discovery  could  be  enforced  only  againsl  a  party 
to  the  action  in  the  case  of  the  pure  bill  for  discovery, 
so  it  could  be  enforced  only  against  a  party  to  the  action 
in  the  case  of  the  combined  bill  for  discovery  and  sub- 
stantive relief.  This  made  it  necessary,  whenever  dis- 
covery was  desired  from  an  officer  of  a  corporation  de- 
fendant, to  join  the  officer  as  a  party  to  the  suit.  It  would 
seem,  therefore,  that  the  provision  of  Rule  58  above 
noted  could  have  no  other  purpose  than  to  dispense  with 
this  cumbersome  and  unnecessary  requirement  of  equity 
procedure  in  cases  where  discovery  only  as  distinguished 
from  substantive  relief  is  desired  from  an  officer  of  a  de- 
fendant corporation. 

One  other  feature  should  be  noted.  The  rule  permits 
a  party  to  file  interrogatories  for  the  discovery  by  the  op- 
posite party  of  facts  and  documents  only,  material  to  the 
support  or  defence  of  the  cause.  Under  the  former  practice 
interrogatories  contained  in  the  bill,  as  also  charges  of 
evidence,  were  directed  solely  to  the  elicitation  of  facts 
which  would  support  the  cause  of  action  set  forth.  It 
would  seem,  therefore,  that  the  rule  in  no  way  changes 
this  practice  with  the  exception  that  the  defendant  may 
now  file  interrogatories  for  the  discovery  of  facts  and  docu- 
ments material  to  his  defence  as  the  plaintiff  formerly 
could  in  support  of  his  bill.  In  other  words,  the  interroga- 
tories are  directed  to  the  discovery  of  such  facts  and  docu- 
ments as  will  sustain  the  claims  of  the  party  filing  the  in- 
terrogatories and  are  not  intended  to  enable  the  party  to 
ascertain  what  facts  or  documents  the  opposite  party 
would  produce  to  sustain  the  latter's  claim.  The  latter 
result  in  so  far  as  it  consists  of  apprising  a  party  of  the 


CHAP.    XX. |  \<  TIONS    IN    EQUITY  667 

nature  of  the  claim  or  defence  of  the  opposite  party  is  ob- 
tained by  the  procedure  for  the  bill  of  particulars.  Be- 
yond these  limitations,  however,  neither  the  bill  of  par- 
ticulars nor  the  specific  interrogatories  as  the  case  may 
be,  can  go. 

A  detailed  discussion  of  the  principles  stated  in  the  fore- 
going paragraph  is  of  course  not  within  the  general  scope 
of  a  work  of  this  character,  and  therefore  reference  is  made 
for  a  further  consideration  of  them  to  the  standard  works 
on  equity  practice.  The  application  of  the  rule,  only 
in  so  far  as  it  has  to  do  with  patent  causes,  is  considered 
here. 

§  590c?.  The  general  purpose  of  the  present  procedure 
involving  specific  interrogatories  purports  to  be  stated  in 
Bronk  v.  Charles  H.  Scott  Co.117  An  examination  of  that 
case  shows  that  a  plaintiff  was  compelled  to  state  in  an- 
swer to  interrogatories  whether  or  not  his  charge  of  in- 
fringement was  based  on  any  other  or  different  acts  of 
the  defendant  than  the  manufacture  or  sale  of  certain 
articles  described  and  exhibited  in  the  answer.  This  is 
obviously  compelling  the  plaintiff  to  disclose  his  own  case 
and  has  been  very  properly  criticised  for  that  reason  by 
the  District  Court  for  the  Eastern  District  of  Tennessee  !  ls 
wherein  Judge  Sanford  made  a  comprehensive  statement 
of  the  purpose  and  scope  of  interrogatories  under  the 
present  rules  as  follows: 

"  Prior  to  the  adoption  of  this  Rule  58  it  was  well  settled 
that  a  complainant  was  entitled  to  a  discovery  of  such 
facts  and  documents  only  as  would  aid  in  the  maintenance 
of  his  own  title  or  cause  of  action  and  not  to  matters  that 
relate  exclusively  to  the  defendant's  title  or  ground  of 
defence  and  that  interrogatories  which  went  beyond  this 

117  Bronk  v.  Charles  H.  Scott  1I8J.  H.  Day  Co.  v.  Mountain 

Co.,  211  F.  R.  338,  1914.  City  Mill,  225  F.  R.  622,  1915. 


668  ACTIONS    IN    EQUITY  [CHAI\    XX. 

and  sought  a,  disclosure  of  the  defendant's  title  or  claim 
having  no  relation  to  the  complainant's  title  or  cause  of 
action  were  inquisitorial  and  unwarranted.   .  .  . 

"After  careful  consideration  I  think  it  is  clear  that  the 
58th  equity  rule  was  intended  merely  to  change  the  pro- 
cedure in  reference  to  obtaining  discovery  and  to  extend 
this  right  as  well  to  defendant  as  to  complainant,  and 
was  not  established  to  change  the  long  established  rule 
in  reference  to  the  subject-matter  of  such  a  discovery,  or 
to  extend  such  right  in  favor  of  either  party  beyond  the? 
matters  relating  to  his  own  ground  of  action  or  defence 
and  enable  him  to  obtain  discovery  in  reference  to  matters 
relating  solely  to  the  ground  of  action  or  defence  of  the 
other  party.  In  other  words,  under  this  rule  the  plaintiff's 
right  of  disclosure  extends  only  to  facts  resting  upon  the 
knowledge  of  the  defendant  or  documents  in  his  possession 
material  to  the  support  of  the  plaintiff's  case;  and  the  de- 
fendant's correlative  right  of  discovery  only  to  facts  and 
matters  material  to  his  defence." 

Judge  Sanford  also  criticised  the  case  of  P.  M.  Co.  v. 
Ajax  Rail  Anchor  Co.,119  on  the  same  ground.  The  in- 
terrogatories in  the  P.  M.  Co.  case  required  the  plaintiff 
to  describe  the  element  in  defendant's  device  which  the 
plaintiff  considered  to  be  a  particular  element  mentioned 
in  the  patent  in  suit,  and  also  to  state  whether  a  certain 
phrase  found  in  the  claims  referred  to  a  certain  element  of 
the  structure,  but  the  court  said  that  the  matter  called  for 
was  purely  evidentiary  and  based  its  decision  on  that 
ground.  According  to  the  J.  H.  Day  Co.  case  and  to  the 
general  principles  covering  specific  interrogatories,  an- 
other ground  would  have  been  that  the  interrogatories 
required  the  plaintiff  to  disclose  his  case.  For  the  same 
reason  the  court  refused  to  allow  interrogatories  requiring 
113  P.  M.  Co.  v.  Ajax  Rail  Anchor  Co.,  216  F.  R.  634,  1914. 


CHAP.    XX. |  ACTIONS    IN    EQUITY  ()t)9 

the  plaintiff  to  state  whether  he  had  manufactured  devices 
under  his  patent,  or  whether  he  had  any  interest  in  any 
other  patents,  or  whether  he  considered  defendant's 
device  to  infringe  such  other  patents,  or  whether  he  con- 
templated bringing  other  patent  suits,  and  whether  or  not 
he  had  knowledge  of  one  of  certain  letters  pleaded  in  the 
answer.  These  latter  interrogatories  are  subject  to  the 
same  criticism  as  those  first  mentioned  in  connection  with 
the  P.  M.  Co.  case.  An  interrogatory  which  inquired 
upon  which  of  the  five  claims  of  the  patent  complainant 
relied,  although  probably  more  proper  for  a  motion  for  a 
bill  of  particulars,  was,  if  the  technical  objection  be  dis- 
regarded, properly  allowed.120 

In  Luten  v.  Camp,121  the  interpretation  given  to  the 
opinion  in  the  P.  M.  Co.  case  was  that  it  is  not  proper  to 
inquire  into  mere  evidence  of  facts  tending  to  prove  the 
nature  of  the  case,  or  facts  tending  to  prove  the  facts  upon 
which  it  is  based,  not  that  it  is  not  proper  to  inquire  into 
the  facts  upon  which  the  case  is  based.  If  by  the  latter 
clause  of  the  sentence  the  court  means  that  it  is  proper  only 
to  inquire  into  ultimate  facts  which  set  forth  the  cause  of 
action,  the  statement  adds  much  confusion  to  the  ques- 
tions of  practice  involved  in  the  employment  of  interroga- 
tories, for  a  pleading  must,  of  course,  in  order  to  set  forth 
a  cause  of  action  or  defence,  set  forth  all  the  ultimate 
facts  which  are  to  be  proved.  In  the  Luten  against  Camp 
case  the  plaintiff  alleged  infringement  of  his  patents  by 
the  defendants,  some  of  whom  contracted  with  the  others 
to  erect  an  alleged  infringing  structure,  and  the  complain- 
ant further  alleged  that  the  contractor  delivered  plans 
and  specifications  to  the  defendants  for  whom  the  bridge 

130  See  Window  Glass  Machine  121  Luten  v.  Camp,  221  F.  R. 

Co.  v.  Brookville  Glass  &  Tile  Co.,      424,  1915. 
229  F.  R.  S33,  1916. 


670  ACTIONS    IN    EQUITY  [CHAP.    XX. 

was  to  be  built  with  the  intent  and  purpose  that  the  plans 
and  specifications  should  be  used  as  the  basis  for  the  con- 
tract. The  court,  therefore,  very  properly  overruled  ob- 
jections filed  by  the  defendant  to  interrogatories  which 
inquired  relative  to  the  connection  of  the  defendants  with 
the  blueprints  and  contracts.  Interrogatories  inquiring 
of  the  defendants  as  to  the  precise  showing  of  the  blue- 
prints, however,  were  held  improper,  the  court  stating 
that  the  plaintiff  was  entitled  to  have  an  order  made 
for  their  production  and  inspection,  but  as  the  blueprints 
themselves  were  the  best  evidence  of  their  contents  the 
defendants  could  not  be  required  in  advance  of  the  trial 
to  furnish  copies,  nor  could  they  be  questioned  as  to  then- 
contents  unless  the  originals  being  in  their  possession  were 
produced  or  were  shown  to  have  been  destroyed  or  lost 
or  beyond  the  power  of  the  plaintiff  to  produce. 

Inasmuch  as  Rule  58  of  the  Equity  Rules  specifically 
allows  a  party  discovery  of  documents  by  means  of  in- 
terrogatories, and  on  the  assumption  that  the  principles 
of  discovery  through  specific  interrogatories  have  not  been 
altered  by  the  change  in  practice,  it  is  not  clear  as  a  rule 
of  practice  why  a  party  is  not  entitled  to  compel  his  op- 
ponents to  produce  originals  or  copies  of  any  documents 
within  the  latter's  control  and  relevant  to  the  party's 
claim  or  defense  as  the  case  may  be. 

Another  form  of  interrogatory  held  objectionable  in  the 
Luten  case  was  that  which  called  for  a  comparison  between 
certain  sets  of  blueprints  inquired  about  and  a  set  of  blue- 
prints attached  to  the  interrogatories.  The  objection 
found  by  the  court  was  that  it  was  a  matter  to  be  estab- 
lished by  expert  testimony  or  by  inspection  of  the  docu- 
ments at  the  trial  and  because  the  opinion  of  the  defend- 
ants was  merely  evidentiary  in  character  and  not  a  fact  in 
support  of  the  plaintiff's  cause.     Also  interrogatories  in- 


CHAP.    XX. |  ACTIONS    IN    EQl  1  TV  671 

quiring  as  to  the  contents  of  documents  which  it  was 
within  the  power  of  the  proponent  of  the  interrogatories 
to  produce  were  held  objectionable.  "Equity  Rule  58" 
said  the  court,  in  Window  Glass  Co.  v.  Brookville  Glass  & 
Tile  Co.,122  "  was  not  intended  to  be  used  to  impose  un- 
reasonable burdens  on  parties  or  to  require  of  parties 
opinions  either  as  to  the  reading  of  contracts  or  as  to  the 
functions  of  particular  parts  of  the  machinery." 

The  same  thing  has  been  substantially  said  in  other 
cases  cited  in  the  notes  to  this  section.  The  court  making 
the  foregoing  statement  further  added  that  interrogatories 
were  intended  to  aid  a  party  in  making  out  his  case  where 
the  ascertainment  of  facts  in  support  of  the  defences  of 
the  cause  was  difficult,  referring  to  a  line  of  cases  holding 
to  the  doctrine  that  discovery  will  not  be  permitted  if 
the  facts  can  be  otherwise  procured,  and  stating  that  in 
reference  to  an  interrogatory  asking  the  defendant  to  dis- 
close the  nature  of  his  alleged  infringing  structure  that  the 
plaintiff  could  easily  procure  the  right  to  inspection  ac- 
cording to  the  ancient  method.  Interrogatories  inquir- 
ing of  the  plaintiff  when  or  where  a  particular  part  of  the 
plaintiff's  apparatus  was  first  used  by  the  plaintiffs  were 
criticised  by  the  court  as  a  part  of  that  well-known 
practice  of  '  attempting  to  ascertain  the  opponent's 
case,  anciently  and  now  characterized  as  a  "  fishing  ex- 
pedition." 

F.  Speidel  Co.  against  N.  Barstow  Co.123  states  that 
Equity  Rule  58  merely  adopts  the  English  rule  of  Order 
XXXI  "  Discovery  and  Inspection  "  of  the  rules  of  the 
Supreme  Court  of  1883  and,  referring  to  the  "  Yearly 
Practice  for  1912  by  Mackenzie  &  Chitty,  Vol.  I,  370" 

122  Window  Glass  Machine  Co.  123  F.  Speidel  Co.  v.  N.  Barstow 

r.  Brookville  Glass  &  Tile  Co.,  229      Co.,  232  F.  R.  617,  1916. 
F.  R.  833,  1916. 


(172  ACTIONS    l.\    EQUITY  [CHAP.    XX. 

says  that  the  provision  for  interrogatories  was  not  intended 
to  give  any  right  to  discovery  that  did  not  exist  before 
or  take  away  any  previously  existing  light  to  production 
on  any  ground  of  privilege.  And  the  court  further  says 
that  it  seems  that  the  purpose  of  the  practice  was  to  enable 
a  party  to  establish  his  case  rather  than  to  seek  informa- 
tion as  to  the  evidence  or  witnesses  of  the  other  party. 
Accordingly  the  court  held  objectionable  an  inquiry  as  to 
what  were  the  steps  of  a  process  practiced  by  a  prior 
corporation  user  and  when  and  where  such  process  was 
practiced  and  by  what  persons,  together  with  their  names 
and  addresses.  While  this  interrogatory  was  properly 
denied,  it  would  seem  to  be  well  within  the  scope  of  a  bill 
of  particulars  for  a  defendant  who  sets  up  a  corporate 
prior  user  to  be  compelled  to  state  the  particular  person 
or  persons  who  actually  practiced  the  use  and  the  places 
where  it  was  practiced.  Of  course  the  information  did  not 
tend  to  establish  the  plaintiff's  case,  but  as  the  name  of  the 
actual  individual  user  was  merely  a  particularization  of 
the  allegation  of  the  answer,  it  would  seem  to  be  proper 
that  the  information  should  be  supplied  to  the  plaintiff 
in  some  form  or  other,  preferably  by  a  bill  of  particulars, 
unless  the  court  were  willing  to  disregard  the  technicality 
as  in  the  case  of  Gennert  against  Burke.124 

Another  point  was  raised  in  the  F.  Speidel  Co.  case  in 
connection  with  the  interrogatory  inquiring  as  to  whether 
or  not  the  defendant  had  practiced  the  process  of  the 
patent  in  suit.  It  appears  to  be  a  principle  of  equity  that 
discovery  will  not  be  allowed  in  suits  in  which  a  penalty 
may  be  inflicted  on  the  offender,  and  consequently  the 
court  held  that  inasmuch  as  a  defendant  may  be  held 
liable  in  a  patent  infringement  suit  for  treble  damages  a 
patent  infringement  suit  was  within  the  scope  of  that  rule 
124  Gennert  v.  Burke  &  James,  Inc.,  231  F.  R.  998,  1916. 


CHAP.    XX.]  ACTIONS    l\    EQUITY  673 

of  equity,  and  that  therefore  such  an  interrogatory  was 
objectionable. 

§  591.  The  twenty-eight  defences  which  may  be  made 
to  actions  at  law  for  infringements  of  patents,125  may  all 
be  made  to  actions  in  equity  based  on  such  causes;  and 
the  latter  actions  are  also  liable  to  two  other  defences, 
to  which  actions  at  law  are  not  subject.  These  are  non- 
jurisdiction  of  equity,  and  laches.  It  is  convenient  first 
to  explain  the  facts  which  may  support  each  of  these  two 
defences,  and  then  state  the  various  methods  in  which 
each  may  be  interposed,  and  afterward  to  review  the 
twenty-eight  defences  in  their  order,  and  to  explain  wherein 
any  of  them  differ  in  their  operation  in  equity,  from  their 
operation  at  law,  and  to  state  what  forms  of  pleading  are 
suitable  to  each,  under  the  varying  circumstances  of 
patent  litigation. 

§  591a.  It  is  no  defense  to  a  bill  for  infringement  that 
the  plaintiffs  have  entered  into  a  combination  or  conspir- 
acy among  themselves  or  with  third  parties  to  violate  the 
so-called  Sherman  Anti-Trust  Act  (Act  July  2, 1890,  c.  647, 
26  Stat.  209). 126 

§  5916.  Under  Rule  30  of  the  Equity  Rules  promulgated 
November  4,  1912,  the  defendant  may  set  forth  any  coun- 
terclaim arising  out  of  the  transaction  which  is  the  sub- 
ject-matter of  the  suit,  and  may  without  cross-bill,  set 
out  any  set-off  or  counterclaim  against  the  plaintiff  which 
might  be  the  subject  of  an  independent  suit  in  equity 
against  him.127     This  rule  has  been  construed  to  cover 

126  Section  440  of  this  book.  U.  S.   Fire  Escape,   etc.,   Co.   v. 

126  Independent  Baking  Powder  Joseph  Halstead  Co.,  195  F.  R. 
Co.  v.  Boorman,  130  F.  R.  726,  295,  1912;  Fraser  v.  Duffey  (citing 
1904;  Motion  Picture  Patents  Co.  authorities),  196  F.  R.  900,  1912. 
v.  Laemmle,  178  F.  R.  104,  1909;  127  Carnegie  Steel  Co.  v.  Colo- 
Motion  Picture  Patents  Co.  v.  rado  Fuel  &  Iron  Co.,  165  F.  R. 
Oilman,    L86    F.    R.    174,    1911;  195,     1908;    American    Sulphite 


674  ACTIONS    IN    EQUITY  [CHAP.    XX. 

only  a  counterclaim  proper  arising  out  of  the  transaction 
which  is  the  subject-matter  of  the  suit  in  spite  of  the  words 
"which  might  be  the  subject  of  an  independent  suit."  128 
A  cause  of  action  by  the  defendant  for  infringement  by 
the  plaintiff  of  patents  relating  to  the  same  subject-matter 
as  that  of  the  patent  in  suit  has  been  held  proper  matter 
for  a  counterclaim  under  the  rule;  129  but  not  when  the 
patents  alleged  by  the  defendant  to  have  been  infringed 
do  not  relate  to  the  same  subject-matter.130  (For  other 
cases  construing  the  rule  see  note.131)  A  counterclaim 
for  unfair  competition  involving  the  respective  rights  of 
the  parties  under  the  patents  involved  in  an  infringement 
suit  has  also  been  held  to  be  proper.132 

If  the  counterclaim  sets  forth  matter  which  is  cogniz- 
able by  a  Federal  court  by  reason  of  the  subject-matter,  as, 
for  example,  infringement  of  a  patent,  it  is  proper  even 
though  the  court  might  not  have  been  able  to  acquire 
original  jurisdiction  had  the  defendant  brought  an  in- 
dependent suit.    The  plaintiff  is  deemed  to  have  waived 

Pulp  Co.  v.  Crown-Columbia  Pulp  Christensen       v.      Westinghouse 

&  Paper  Co.,  169  F.  R.  140,  1909;  Traction  Brake  Co.,  235  F.  R. 

W.  W.  Sly  Mfg.  Co.  v.  Central  898,  1916. 

Iron    Works,    201    F.    R.    683,  130  Adamson  v.  Shaler,  208  F.  R. 

1912.  566,  1913;  Klander-Weldon  Dye- 

128  Terry  Steam  Turbine  Co.  v.  ing  Machine  Co.  v.  Giles,  212 
B.  F.  Sturtevant  Co.,  204  F.  R.  F.  R.  452,  1914. 

103,      1913;     Williams     Patent  m  Salt's   Textile  Mfg.   Co.   v. 

Crusher,  etc.,  Co.  v.  Kinsey  Mfg.  Tingne  Mfg.  Co.,  208  F.  R.  156, 

Co.,  205  F.  R.  375,  1913.  1913;    Vacuum    Cleaner    Co.    v. 

Contra,  Electric    Boat    Co.  v.  American  Rotary  Valve  Co.,  208 

Lake    Torpedo    Boat    Co.    (re-  F.  R.  419,   1913;  Christensen  v. 

viewing  authorities),  215  F.  R.  WestinghouseTraction  Brake  Co., 
377,  1914.                                        '   235  F.  R.  898,  1916. 

129  Marconi  Wireless  Telegraph  132  United  States  Expansion 
Co.  v.  National  Electric  Signal  Bolt  Co.  v.  H.  G.  Kroucke  Hard- 
Co.,  206  F.  R.  295,  1913;  but  see  ware  Co.,  216  F.  R.  186,  1914. 


CHAP.    XX.]  ACTIONS   IN    EQUITY  l)7."> 

the  question  of  jurisdiction  of  the  person  in  such  a  case. 
But  if  the  Federal  court  would  have  jurisdiction  of  the 
counterclaim  only  by  reason  of  diversity  of  citizenship, 
as,  for  example,  in  the  case  of  unfair  competition,  there  is 
no  jurisdiction  unless  the  requisite  diversity  exists.132" 

§  592.  Non-jurisdiction  in  equity  is  a  defence  which  will 
succeed  in  any  infringement  case,  unless  an  injunction  is 
granted,  or  at  least  rightfully  prayed  for  in  that  case,  or 
unless  some  impediment  prevents  a  resort  to  remedies 
purely  legal,  or  unless  the  circumstances  of  the  case 
render  the  remedy  obtainable  by  an  action  at  law,  difficult, 
inadequate,  or  incomplete.133  Equity  jurisdiction  is 
therefore  absent  where  the  patent  expired  before  the  bill 
is  filed.134  But  a  bill  for  infringement  of  both  an  expired 
and  unexpired  patent  states  grounds  for  equitable  relief 
which  alleges  that  the  defendant  has  combined  the  de- 
vices of  both  patents  in  a  single  machine,  so  conjoined 
that  it  is  practically  impossible  to  apportion  the  damages 
and  profits  between  the  two  patents.135  And  it  has  even 
been  held  that,  where  a  number  of  patents  are  sued  on 
in  separate  suits  between  the  same  parties,  the  patents 
pertaining  to  the  same  subject-matter,  equity  has  juris- 
diction of  all  if  they  could  be  tried  on  the  same  record 
even  though  some  of  them  have  nearly  expired.136  Where 
the  complainant  has  no  ownership  in  the  patent  at  the 

"2"  U.  S.  Expansion  Bolt  Co.  v.  1903;  T.  W.  &  C.  B.  Sheridan  Co. 

Kroucke  Hardware  Co.,  234  F.  R.  v.  Robert  O.  Law  Co.,  172  F.  R. 

868,  1916;  Colman  v.  Am.  Warp  223,  1909. 

Drawing  Machine  Co.,  235  F.  R.  m  Huntington  Dry  Pulverizer 

531,  1915.  Co.  v.  Virginia-Carolina  Chemical 

133  Root   v.   Railway   Co.,    105  Co.,  130  F.  R.  558,  1904. 

U.  S.  189,  1881.  IM  Thomson-Houston    Electric 

134  Root  r.  Railway  Co.,  105  Co.  v.  Electrose  Mfg.  Co.,  155 
U.  S.  189,  1881;  Farrel  v.  United      F.  R.  543,  1907. 

Verde  Copper  Co.,  121  F.  R.  551, 


G76 


ACTIONS    IN    EQUITY 


CHAP.    XX. 


time  when  the  bill  was  filed,  equitable  jurisdiction  is  also 
absent.187  Equitable  title  to  a  patent  arising  out  of  an 
executory  contract  to  assign  the  patent  to  the  plaintiff 
is  not  sufficient  to  confer  jurisdiction.138  But  where  a 
bill  Is  filed  lief  ore  the  expiration  of  the  patent  upon  which 
it  is  based,  and  where  it  truly  states  a  proper  case  for  an 
injunction,  and  contains  a  proper  prayer  for  that  relief, 
equity  has  jurisdiction,  and  should  retain  it  to  the  end  of 
the  suit;  even  if,  on  account  of  the  expiration  of  the  patent 
before  a  hearing  is  had,139  or  on  account  of  the  sale  of  the 
patent  by  the  complainant  before  a  hearing  is  obtained,140 
or  on  account  of  public  policy,141  or  on  account  of  the  com- 
plainant's delay  to  move,141"  no  injunction  is  ever  granted 
in  the  case. 


137  Waterman  v.  Mackenzie,  138 
U.  S.  257,  1891. 

138  Milwaukee  Carving  Co.  v. 
Brunswicke-Balke  Co.,  126  F.  R. 
171,  1903. 

"•  Clark  v.  Wooster,  119  U.  S. 
325,  1886;  Beedle  v.  Bennett, 
122  U.  S.  75,  1886;  Gottfried 
v.  Brewing  Co.,  13  F.  R.  479, 
1882;  Gottfried  v.  Moerlein,  14 
F.  .  R.  170,  1882;  Forehand  v. 
Porter,  15  F.  R.  256,  1883;  Reay 
v.  Raynor,  19  F.  R.  309,  1884; 
Adams  v.  Howard,  19  F.  R.  317, 
1884;  Dick  v.  Struthers,  25  F.  R. 
103,  1885;  Adams  v.  Iron  Co.,  26 
F.  R.  324,  1886;  Kirk  v.  DuBois, 
28  F.  R.  460,  1886;  Brooks  v. 
Miller,  28  F.  R.  615,  1886;  Kittle 
v.  De  Graff,  30  F.  R.  689,  1887; 
Kittle  v.  Rogers,  33  F.  R.  49, 
1887;  Hohorst  v.  Howard,  37 
F.  R.  97,  188S;  Singer  Mfg.  Co.  v. 


Wilson  Mach.  Co.,  38  F.  R.  587, 
1889;  Ross  v.  City  of  Ft.  Wayne, 
63  F.  R.  466,  1894;  Bradner 
Hanger  Co.  v.  Waterbury  But- 
ton Co.,  106  F.  R.  735,  1901; 
United  States  Mitis  Co.  v.  De- 
troit Steel  &  Spring  Co.,  122 
F.  R.  865,  1903;  Huntington 
Dry  Pulverizer  Co.  v.  Virginia- 
Carolina  Chemical  Co.,  130 
F.  R.  558,  1904;  Schmeiser  Mfg. 
Co.  v.  Lilly,  189  F.  R.  631, 
1911. 

Contra,  Miller  v.  Schwarner,  130 
F.  R.  561,  1904. 

140  New  York  Belting  Co.  v. 
New  Jersey  Car-Spring  Co.,  47 
F.  R.  505,  1891;  48  F.  R.  559, 
1891. 

141  Bragg  Mfg.  Co.  v.  Hartford, 
56  F.  R.  293,  1893. 

1410  Waite  v.  Chair  Co.,  45  F.  R. 
259,  1891. 


CHAP.    XX.]  ACTIONS   IN    EQUITY  077 

But  where  a  bill  untruly  states  a  proper  case  for  an  in- 
junction, and  contains  a  prayer  for  that  relief,  the  juris- 
diction of  equity  will  lapse  and  the  bill  be  dismissed,  when- 
ever it  is  shown  to  have  been  untrue  in  respect  of  those  of 
its  statements  upon  which  the  prayer  for  an  injunction  is 
based.142  And  where  a  bill  states  no  proper  case  for  an 
injunction,  but  contains  a  prayer  for  such  a  writ,  the 
jurisdiction  of  equity  will  not  attach  at  all,  and  the  bill 
be  dismissed  whenever  its  character  is  brought  to  the  at- 
tention of  the  court.143  And  where  a  bill  is  filed  so  shortly 
before  the  expiration  of  the  patent  upon  which  it  is  based, 
that  no  motion  for  an  injunction  can  be  regularly  notified 
to  the  defendant  and  heard  by  the  court  till  after  that 
expiration,  the  bill  will  be  dismissed  whenever  the  court 
learns  that  no  injunction  can  be  lawfully  granted.144  And 
where  a  bill  states  no  ground  for  a  preliminary  injunction, 
and  is  filed  so  shortly  before  the  expiration  of  the  patent 
that  no  permanent  injunction  can  possibly  be  obtained  in 
the  case,  the  bill  will  also  be  dismissed.145  And  if  no  in- 
junction is  granted,  and  if  the  court  does  dismiss  the  bill 
for  want  of  equity,  in  the  absence  of  a  right  to  an  injunc- 
tion at  the  time  of  the  hearing,  such  dismissal  will  not  be 
reversed  on  an  appeal.146 

142  Dowell  v.  Mitchell,  105  U.  S.  Hartford,   56  F.   R.   293,    1893; 

430,  1881.  Overweight  Elevator  Co.  v.  Stand- 

l«  Campbell  v.  Ward,  12  F.  R.  ard  Elevator  Co.,  96  F.  R.  231, 

150,  1882;  Creamer  v.  Bowers,  30  1899;      Diamond     Stone-Sawing 

F.  R.  185,  1887.  Machine  Co.  v.  Sens,  159  F.  R. 

»*  Clark  v.  Wooster,  119  U.  S.  497,  1908. 

324,  1886;  Burdell  v.  Comstock,  See   Tompkins  v.   Internation- 

15  F.R.  395, 1883;  Davis  v.  Smith,  al  Paper    Co.,    183    F.   R.  773, 

19  F.  R.  823,  1884;  Mershon  v.  1910. 

Furnace  Co.,  24  F.  R.  741,  1885;  145  McDonald     v.     Miller,     84 

American     Cable     Ry.     Co.     v.  F.  R.  344, 1898;  Heap  ?>.  Borchers, 

Chicago  City  Ry.  Co.,  41  F.  R.  108  F.  R.  237,  1901. 

522,    1890;    Bragg    Mfg.    Co.    v.  lw  Keyes    v.    Mining   Co.,    158 


678  ACTIONS    IN   EQUITY  [CHAP.    XX. 

But  the  Court  of  Appeals  for  the  second  circuit  holds 
that  a  bill  filed  the  day  before  the  expiration  of  the  patent, 
which  states  that  the  plaintiff  has  never  used  his  paten i, 
and  has  never  derived  any  financial  benefit  from  it,  states  a 
cause  of  action  in  equity  for  the  reason  that  on  the  facts  the 
plaintiff  would  be  unable  to  prove  any  damages  at  law.148" 

§  593.  The  case  of  Root  v.  Railway  Co.  does  not  pre- 
cisely state  what  exceptional  facts  will  give  equity  juris- 
diction, independent  of  any  injunction  or  prayer  for  in- 
junction. What  the  court  said  on  that  subject,  was  said 
in  the  following  language:  " Grounds  of  equitable  relief 
may  arise,  other  than  by  way  of  injunction,  as  where  the 
title  of  the  complainant  is  equitable  merely,  or  equitable 
interposition  is  necessary  on  account  of  the  impediments 
which  prevent  a  resort  to  remedies  purely  legal;  and  such 
an  equity  may  arise  out  of,  and  inhere  in,  the  nature  of 
the  account  itself,  springing  from  special  and  peculiar 
circumstances  which  disable  the  patentee  from  a  recovery 
at  law  altogether,  or  render  his  remedy  in  a  legal  tribunal 
difficult,  inadequate,  and  incomplete;  and  as  such  cases 
cannot  be  defined  more  exactly,  each  must  rest  upon  its 
own  peculiar  circumstances,  as  furnishing  a  clear  and 
satisfactory  ground  of  exception  from  the  general  rule." 
But  in  a  later  case,  that  court  explained  that  grounds  of 
equitable  relief  do  not  arise  "where  the  title  of  the  com- 
plainant is  equitable  merely,"  unless  that  fact  consti- 
tutes an  impediment  to  a  resort  to  remedies  purely  legal, 
or  constitutes  a  circumstance  which  renders  the  remedy 
obtainable  by  an  action  at  law  difficult,  inadequate,  or 
incomplete.147    And  Judge  Colt  has  decided  that  such  an 

U.  S.  152,  1895;  Russell  v.  Kern,      al    Paper  Co.,    183   F.    R.   773, 
69  F.  R.  94,  1895.  1910. 

i46«  Tompkins    r.    Internation-  147  Hayward   v.    Andrews,    106 

U.  S.  672,  1882. 


CHAP.    XX.]  ACTIONS    IN    EQUITY  679 

equity  does  not  "arise  out  of,  and  inhere  in,  the  nature 
of  the  account  itself"  merely  because  the  account  is  intri- 
cate.148 

§  594.  Want  of  jurisdiction  in  equity  may  be  set  up  by 
a  defendant  by  motion  to  dismiss  or  in  an  answer.  But  it 
cannot  be  interposed  without  any  pleading  to  sustain  it ;  ' n 
except  where  the  bill  shows  that  it  was  filed  after  the 
patent  expired.  In  that  case,  non-jurisdiction  may  be  in- 
voked by  a  motion  at  any  stage  of  the  case  in  the  Circuit 
Court. x  50  There  was,  under  the  practice  prior  to  the  Equity 
Rules  of  1913,  an  advantage  in  making  this  defence  by 
demurrer  instead  of  by  answer,  or  by  motion  after  an 
answer;  for  in  the  first  case  the  bill  could  be  dismissed  with 
costs,151  while  in  either  of  the  others  no  costs  could  be  re- 
covered, even  if  the  defence  was  successful.152  This 
advantage  does  not  now  exist. 

§  595.  Prior  adjudication  in  an  action  at  law  is  not  neces- 
sary to  give  jurisdiction  to  equity  in  cases  of  infringe- 
ments of  patents,  nor  is  such  an  adjudication  necessary 
to  call  equity  into  activity  in  that  behalf.153  A  district 
court  may,  in  its  discretion,  order  a  trial  at  law  in  such  a 
case,154  or  order  a  trial  by  jury  at  its  own  bar,155  in  order 
to  inform  the  conscience  of  the  chancellor;  but  no  such 

148  Lord  v.  Machine  Co.,  24  Co.  v.  Fessenden,  131  F.  R.  493, 
F.  R.  803,  1885;  Adams  v.  Iron      1904. 

Co.,  26  F.  R.  325,  1886.  152  Dawes  v.  Taylor,  14  Report- 

149  Reynes     v.     Dumont,     130      er,  180,  1882. 

U.   S.   395,   1889;  Tyler  v.  Sav-  153  McCoy  v.  Nelson,  121  U.  S. 

age,   143   U.    S.   96,    1892;    De-  487,    1887;   Wyckoff   v.   Wagner 

derick    v.    Fox,  56   F.    R.    717,  Typewriter  Co.,  '88  F.   R.   516, 

1893.  1898. 

150  Spring  v.  Sewing  Machine  154Wise  v.  Railway  Co.,  33 
Co.,  13  F.  R.  446,  1882.  F.  R.  277,  1888. 

151  International   Wireless  Tel.  155 18  Statutes  at  Large,  Part  3, 

Ch.  77,  Section  2,  p.  316. 


680  ACTIONS    l.\     EQUITY  [CHAP.    XX. 

t  rial  can  be  demanded  by  either  or  both  of  the  part  ies  as  an 
absolute  right,  for  courts  of  equity  are  not  only  really,  but 
also  technically,  competent  to  decide  questions  of  facts. K,c 
§  596.  Laches  is  a  defence  which  is  peculiar  to  courts  of 
equity.  "The  cases  are  many  in  which  this  defence  has 
been  invoked  and  considered.  It  is  true,  that  by  reason 
of  their  differences  of  fact,  no  one  case  becomes  an  exact, 
precedent  for  another,  yet  a  uniform  principle  pervades 
them  all.  They  proceed  on  the  assumption  that  the  party 
to  whom  laches  is  imputed,  has  knowledge  of  his  rights, 
and  an  ample  opportunity  to  establish  them  in  the  proper 
forum;  that  by  reason  of  his  delay,  the  adverse  party  has 
good  reason  to  believe  that  the  alleged  rights  are  worth- 
less, or  have  been  abandoned;  and  that  because  of  the 
change  in  condition  or  relations  during  this  period  of  delay, 
it  would  be  an  injustice  to  the  latter  to  permit  the  former 
to  now  assert  them."157  "The  length  of  time  during  which 
the  party  neglects  the  assertion  of  his  rights,  which,  must 
pass  in  order  to  show  laches,  varies  with  the  peculiar 
circumstances  of  each  case,  and  is  not,  like  the  matter  of 
limitations,  subject  to  an  arbitrary  rule.  It  is  an  equi- 
table defence,  controlled  by  equitable  considerations,  and 
the  lapse  of  time  must  be  so  great,  and  the  relations  of  the 
defendant  to  the  rights  such,  that  it  would  be  inequitable 
to  permit  the  plaintiff  to  assert  them  now."  158  In  pursu- 
ance of  these  principles,  courts  of  equity  sometimes  dis- 
miss bills  for  infringements  of  patents,  because  they  were 
not  filed  with  diligence,159  or  not  prosecuted  with  dili- 

156  Cochrane  v.  Deener,  94  U.  S.  See  Section  186a. 

780,  1876.  159  Lane  &  Bodley  Co.  v.  Locke, 

157  Galliher    v.     Cadwell,     145      150  U.  S.  200,  1893;  New  York 
U.  S.  372,  1892.  Grape  Sugar  Co.  v.  Buffalo  Grape 

158Halstead    v.    Grinnan,    152      Sugar  Co.,  24  F.  R.  604,   1885; 
U.  S.  416, 1894.  Edison    Electric    Light    Co.    v. 


CHAP.  XX. | 


ACTION'S  IX  EQUITY 


68 


gence  after  they  were  filed;  lfi0  and  whether  the  complain- 
ant or  his  assignor  is  the  party  who  is  chargeable  with 
laches.""  But  delay  to  sue  is  not  always  laches,  because 
it  may  have  been  harmless  to  the  defendant ;  I6'2  or  it  may 
have  resulted  from  the  fact  that  the  complainant  did  not 
know  of  the  infringement  till  long  after  it  began;  I68  or 
from  the  fact  that  he  was  litigating  a  test  case  under  his 
patent  against  another  infringer  during  the  time  of  the 
delay;  ,64  or  it  may  have  occurred  after  the  infringer  was 
warned  to  infringe  no  more,  and  while  the  patentee  was 
preparing  for  action. 165  The  second  of  these  circumstances 
excuses  delay,  because  vigilance  does  not  imply  omnis- 
cience; and  the  third  excuses  delay,  because  abstinence 


Equitable  Life  Co.,  55  F.  R.  479, 
L893;  Fosdick  v.  Lowell  Machine 
Shop,  58  F.  R.  817,  1893;  Starrett 
r.  Arms  &  Tool  Co.,  96  F.  R.  244, 
1899;  Covert  v.  Travers  Bros.  Co., 
90  F.  R.  568,  1899;  Meyrowitz 
Mfg.  Co.  v.  Eccleston,  98  F.  R. 
438,  1899;  Westinghouse  Air- 
Brake  Co.  v.  New  York  Air-Brake 
Co.,  Ill  F.  R.  741,  1901;  Safety 
Car  H.  &  L.  Co.  v.  Consolidated 
Car  Heating  Co.,  100  F.  R.  470, 
1908;  L.  H.  Gilmer  Co.  v.  Geisel, 
108  F.  R.  313,  1909;  Brown  & 
Scharpe  Mfg.  Co.  v.  Coates  Clip- 
per Mfg.  Co.,  195  F.  R.  84,  1912. 

180  Johnston  v.  Mining  Co.,  148 
U.  S.  370,  1892. 

181  Kittle  v.  Hall,  29  F.  R,  511, 
1887;  Woodmanse  &  Hewitt  Co. 
v.  Williams,  08  F.  R.  492,  1895; 
Richardson  v.  Osborne  &  Co.,  82 
F.  R.  90,  1897;  and  93  F.  R.  828, 
1S99. 


182  American  Street-Car  Adver- 
tising Co.  v.  Jones,  122  F.  R. 
810,  1903. 

163  Imperial  Chemical  Mfg.  Co. 
v.  Stein,  77  F.  R.  012,  1890. 

184  Van  Hook  v.  Pendleton,  1 
Blatch.  193,  1840;  Green  v. 
French,  4  Bann.  &  Ard.  171,  1879; 
Green  v.  Barney,  19  F.  R.  421, 
1884;  American  Bell  Telephone 
Co.  v.  Southern  Telephone  Co., 
34  F.  R.  802,  f8SS;  Edison 
Electric  Light  Co.  v.  Mt.  Morris 
Electric  Light  Co.,  57  F.  R.  044, 
1893;  Norton  v.  Automatic  Can 
Co.,  57  F.  R.  932,  1893;  Taylor 
v.  Sawyer  Spindle  Co.,  75  F.  R. 
304,  1890;  Timolat  v.  Franklin 
Boiler  Works  Co.,  122  F.  R.  09, 
1903;  United  States  Mitis  Co.  v. 
Detroit  Steel  &  Spring  Co.,  122 
F.  R.  800,  1903. 

185Seibert  Oil  Cup  Co.  />.  Lu- 
bricator Co.,  34  F.  R.  34,  1888. 


682  ACTIONS   IN    EQUITY  [CHAP.    XX. 

from  vexatious  litigation  is  worthy  to  be  praised  rather 
than  punished  by  a  court  of  equity;  and  the  fourth  ex- 
cuses delay  because  it  is  neglect,  and  not  patience,  that 
constitutes  laches.  In  fact  it  may  be  stated  that  time 
alone  is  not  a  test  of  laches.  There  must  be  something 
that  practically  amounts  to  an  equitable  estoppel  against 
the  plaintiff,  for  instance,  the  investment  by  the  defendant 
of  capital  in  the  infringing  business  with  the  knowledge 
of  the  plaintiff  accompanied  by  inaction  on  the  part  of 
the  latter.166 

§  597.  The  defence  of  laches  could  formerly  be  made  in 
a  demurrer,167  or  in  a  plea,168  or  in  an  answer,  or  in  an  ar- 
gument on  the  hearing  without  any  pleading  to  support 
it.169  Of  course  now  this  defence  can  be  made  only  by 
answer  or  motion  to  dismiss  accordingly  as  the  situation 
permits. 

To  guard  against  a  motion  to  dismiss  based  on  laches, 
in  a  case  where  long  delay  intervened  between  the  infringe- 
ment and  the  filing  of  the  bill,  the  bill  ought  to  state  the 
existing  excuses  for  that  delay;  17°  and  to  guard  against 
such  a  defence  being  started  on  the  hearing,  the  evidence 
ought  to  show  whatever  excuse  the  complainant  can  inter- 
pose.   This  is  absolutely  essential  in  a  bill  for  infringement 

196  Valvona-Marchiony  Co.  v.  m  Edison  Electric  Light  Co.  v. 
Marchiony,  207  F.  R.  380,  1913;  Equitable  Life  Co.,  55  F.  R.  479, 
General    Electric    Co.    v.    Yost      1893. 

Electric  &  Mfg.  Co.,  208  F.  R.  199  Sullivan  v.  Railroad  Co.,  94 

719,  1913;  Hausen  v.  Slicks,  216  U.  S.  811,  1876;  Woodmanse  & 

F.  R.  164,  1914;  Drum  v.  Tuiner,  Hewitt  Mfg.  Co.  v.  Williams,  68 

219  F.  R.  188,  1914.  F.   R.   494,    1895;  Westinghouse 

197  Maxwell  v.  Kennedy,  8  How-  Air-Brake  Co.  v.  New  York  Air- 
ard,  222,   1850.  Brake  Co.,  Ill  F.  R.  741,  1901. 

Contra,  Marconi  Wireless  Tele-  no  Edison  Electric  Light  Co.  v. 
graph  Co.  v.  New  England  Navi-  Equitable  Life  Co.,  55  F.  R.  481, 
gation  Co.,  191  F.  R.  194,  1911.        1893. 


CHAP.    XX.]  ACTIONS    IN    EQUITY  lis:; 

of  a  broadened  reissue  where  it  appears  that  a  delay  of 
more  than  two  years  intervened  between  the  issuance  of 
the  original  patent  and  the  application  for  the  reissue.171 

§  598.  The  first  of  the  twenty-seven  defences  which  are 
known  both  to  actions  at  law  and  actions  in  equity  for  in- 
fringements of  patents,  can  be  made  in  a  motion  to  dis- 
miss, where  the  letters  patent  appear  on  their  face  to  have 
been  granted  for  something  other  than  a  process,  machine, 
manufacture,  composition  of  matter,  or  design.172  And 
indeed  any  defence,  which  can  be  based  upon  the  face  of 
the  patent,  can  be  made  by  motion  to  dismiss.173 

§  599.  The  second  defence  may  be  made  on  the  hearing, 
without  any  pleading  or  evidence,  in  all  cases  where  the 
court  will  take  judicial  notice  of  the  fact  which  shows 
want  of  invention; 174  and  a  motion  to  dismiss  will  also  be 
sustained  in  the  same  circumstances.175  But  a  court  will 
not  take  judicial  notice  of  a  fact,  merely  because  it  is 

171  American  Thermos  Bottle  175  Risdon  Locomotive  Works  v. 
Co.  v.  Semple,  222  F.  R.  942,  Medart,  158  U.  S.  84,  1895;  Dick 
1915.  v.  Supply  Co.,  25  F.  R.  105,  1885; 

172  Risdon  Locomotive  Works  New  York  Belting  Co.  v.  Rubber 
v.  Medart,  158  U.  S.  84,  1895.  Co.,  30  F.  R.  785,  1887;  West  v. 

173  Richards  v.  Chase  Elevator  Rae,  33  F.  R.  45,  1887;  Root  v. 
Co.,  158  U.  S.  301,  1895;  Equity  Sontag,  47  F.  R.  309, 1891;  United 
Rule  29.  States  Credit  System  Co.  v.  In- 

17"  Brown  v.  Piper,  91  U.  S.  41,  demnity  Co.,  51  F.  R.  751,  1892; 
1875;  Terhune  v.  Phillips,  99  U.  S.  United  States  Credit  System  Co. 
592,  1878;  Slawson  v.  Railroad  v.  Credit  Co.,  53  F.  R.  818,  1893; 
Co.,  107  U.  S.  649,  1882;  Ligowski  WaU  v.  Leek,  61  F.  R.  291,  1894; 
Clay-Pigeon  Co.  v.  Clay-Bird  Co.,  Covert  v.  Travers  Bros.  Co.,  70 
34  F.  R.  332,  1888;  Hunt  Bros.  F.  R.  788,  1895;  Lamson  Con- 
Fruit  Packing  Co.  v.  Cassidy,  53  solidated  Service  Co.  v.  Siegel- 
F.  R.  260,  1892;  Schreiber  v.  Cooper  Co.,  106  F.  R.  734,  1901; 
Grim,  65  F.  R.  221,  1895;  Cary  Baker  v.  F.  A.  Duncombe  Mfg. 
Mfg.  Co.  v.  De  Haven,  88  F.  R.  Co.,  146  F.  R.  744,  1906,  citing 
700,  1898.  numerous  cases. 


684 


ACTIONS  IN  EQUITY 


CHAP.  XX. 


stated  in  a  prior  patent: 17G  nor  of  any  fact  which  is  not 
generally  known,177  even  though  known  to  the  judge; 17H 
nor  of  any  fact,  the  reality  or  the  significance  of  which  is 
subject  to  doubt.179  And  a  motion  to  dismiss  for  want  of 
invention  will  be  denied  except  in  a  clear  case.180  Where 
the  state  of  the  prior  art  must  be  proved  by  evidence,  in 
order  to  show  that  the  advance  covered  by  the  patent  did 
not  amount  to  invention;  it  is  necessary  to  set  up  the  de- 
fence of  want  of  invention  in  an  answer.181  But  the  an- 
swer need  not  state  the  particular  part  of  the  prior 
art,  upon  which  the  defence  of  want  of  invention  is 
based.181" 


I7«  Bottle  Seal  Co.  v.  De  La 
Vergne  Co.,  47  F.  R.  61,  1891; 
Parsons  v.  Seelye,  100  F.  R.  454, 
1900. 

177  Eclipse  Mfg.  Co.  v.  Adkins, 
36  F.  R.  554,  1888;  Lyons  v. 
Drucker,  106  F.  R.  416,  1901. 

178  New  York  Belting  Co.  v. 
New  Jersey  Rubber  Co.,  137  U.  S. 
449,  1890;  Am.  Sulphite  Pulp 
Co.  v.  DeGrasse  Paper  Co.,  157 
F.  R.  660,  1907. 

170  Blessing  v.  Copper  Works,  34 
F.  R.  753,  1888;  Lalance  &  Gros- 
jean  Mfg.  Co.  v.  Mosheim,  48 
F.  R.  452,  1891;  Hanlon  v.  Prim- 
rose, 56  F.  R.  600,  1893;  Davock 
v.  Chicago  &  Northwestern  R.  R. 
Co.,  69  F.  R.  468,  1895;  American 
Fibre-Chamois  Co.  v.  Buckskin- 
Fibre  Co.,  72  F.  R.  512,  1896. 

180  Standard  Oil  Co.  v.  Southern 
Pacific  Co.,  42  F.  R.  295,  1890; 
Krick  v.  Jansen,  52  F.  R.  823, 
1892;  Drainage  Construction  Co. 
v.  Engelwood  Sewer  Co.,  67  F.  R. 


141,  1894;  Beer  v.  Walbridge,  100 
F.  R.  465,  1900;  Electric  Vehicle 
Co.  v.  Winton  Motor-Carriage 
Co.,  104  F.  R.  814,  1900;  Neidich 
v.  Fosbenner,  108  F.  R.  266,  1901 ; 
Chinnock  v.  Paterson  P.  &  S.  Tel. 
Co.,  112  F.  R.  531,  1902;  Drake 
Castle  Pressed  Steel  Lug  Co.  v. 
Brownell,  123  F.  R.  90,  1903; 
Merrimack  Mattress  Mfg.  Co,  v. 
Schlesinger,  124  F.  R.  237,  1903; 
Southern  Plow  Co.  v.  Atlantic 
Agricultural  Works  (in  which  the 
authorities  are  reviewed),  165 
F.  R.  214,  1908. 

181  Bottle  Seal  Co.  v.  De  La 
Vergne  Co.,  47  F.  R.  61,  1891; 
Brickill  v.  Hartford,  57  F.  R.  217, 
1893;  Drainage  Construction  Co. 
v.  Englewood  Sewer  Co.,  67  F.  R. 
141,  1894. 

18ia  Dunbar  v.  Myers,  94  U.  S. 
198,  1876;  Western  Electric  Co. 
v.  North  Electric  Co.,  135  F.  R. 
79,  1905  (but  see  Conderman  v. 
Clements,  147  F.  R.  915,  1906). 


CHAP.    XX.]  ACTIONS   IN    EQUITY  685 

A  motion  to  dismiss  will  not  be  sustained,  in  such  a 
case,  on  the  basis  of  what  the  patent  may  set  forth  as  the 
state  of  the  prior  art;  unless  the  patentee  is  some  way  es- 
topped from  showing  the  patent  to  be  otherwise  than  ac- 
curate in  its  statements  on  that  subject.182  A  plea  was 
never  applicable  to  such  a  case,  because  defendants  could 
seldom  swear  to  the  state  of  the  art,  and  even  where  they 
could  they  could  not  plead  resulting  want  of  invention, 
because  that  depends  upon  the  construction  of  the  patent, 
which  is  to  be  made  by  the  court  in  the  light  of  the  state 
of  the  art.  When  interposing  this  defence,  it  is  not  neces- 
sary to  state  what  facts  are  intended  to  be  proved  in  its 
support;  because  those  facts  refer  only  to  the  state  of  the 
art,  and  not  to  novelty.183  The  function  of  an  answer, 
in  respect  of  this  defence,  is  to  notify  the  complainant  that 
the  evidence  of  the  state  of  the  art,  which  is  to  be  taken 
by  the  defendant,  will  be  invoked  at  the  hearing  to  show 
want  of  invention,  and  not  merely  to  narrow  the  patent 
and  thus  show  non-infringement.  It  has  been  held  that 
where  absence  of  invention  clearly  appears  on  the  face 
of  the  patent  itself,  the  court  may  even  though  the  ques- 
tion is  not  raised  by  the  pleadings,  sua  sponte,  declare  the 
patent  invalid  and  dismiss  the  bill.184 

§  600.  The  third  defence  could  never  be  set  up  in  a  plea, 
because  the  statute  expressly  provides  that  it  shall  be  set 
up  in  an  answer.185    Nor  can  it  be  based  on  such  a  notice 

182  Indurated  Fibre  Co.  v.  Grace,  age  &  Warehouse  Co.,  153  F.  R. 
52  F.  R.  128,  1892.  181,  1907. 

183  Vance  v.  Campbell,  1  Black,  185  Carnrick  v.  McKesson,  8 
430, 1861;  Hunt  Bros.  Fruit  Pack-  F.  R.  807,  1881;  Arrott  v.  Stand- 
ing Co.  v.  Cassidy,  53  F.  R.  260,  ard  Sanitary  Mfg.  Co.,  113  F.  R. 
1892;  Dayton  Crupper  Co.  v.  389,  1902;  Western  Electric  Co.  r. 
Ruhl,  55  F.  R.  651,  1893.  North  Electric  Co.,  135  F.  R.  79, 

>8<  Wills  v.  Scranton  Cold  Stor-      1905;  Duntley  Mfg.  Co.  v.  Keller 

Mfg.  Co.,  173  F.  R.  318,  1909. 


686  ACTIONS    IN    EQUITY  [CHAP.    XX. 

as  will  effect  the  purpose  in  an  action  at  law.186  It  has 
always  required  an  answer  for  its  embodiment; 187  and  that 
answer  must  state  the  same  things  which  a  statutory  no- 
tice of  want  of  novelty  in  an  action  at  law  is  required  to 
contain.188 

It  has  been  held  on  the  circuit,  that  evidence  of  want  of 
novelty,  taken  without  being  properly  pleaded  in  the 
answer,  is  not  made  admissible  by  being  set  up  in  a  sub- 
sequent amendment  of  that  pleading.189  In  another  case 
it  was  held  to  rest  in  the  discretion  of  the  court  to  admit 
the  evidence  so  taken,  and  subsequently  pleaded,  or  to 
reject  that  evidence,  but  permit  the  defendant  to  take  it 
anew  under  the  amended  answer.190  These  holdings  are 
hardly  consistent  with  each  other,  and  neither  of  them 
seems  consistent  with  an  earlier  Supreme  Court  decision 
on  a  similar  point. 191  In  that  case  it  was  held  that  evidence 
of  want  of  novelty  is  admissible  in  an  action  at  law,  where 
it  was  taken  without  being  properly  set  up  in  any  notice, 
but  where  a  proper  notice  was  subsequently  given,  and 
given  thirty  days  before  the  trial. 

Where  the  answer  states  that  the  patent  sued  on  is 
void  for  want  of  novelty,  evidence  to  support  that  state- 
ment will  be  admitted  at  the  hearing,  though  not  specified 
in  the  answer,  unless  the  complainant  objects  to  that 
evidence  for  want  of  the  statutory  notice.192 

188  Doughty  v.  West,  2  Fisher,  chine  Co.  v.  Keith,  101  U.  S.  493, 

555,  1865.  1879. 

187  Seymour  v.  Osborne,  11  Wal-  189  Roberts  v.  Buck,  1  Holmes, 
lace,  516,  1870;  Roemer  v.  Simon,  224,  1873. 

95    U.    S.    214,    1877;    Vacuum  19°Allis  v.  Buckstaff,  13  F.  R. 

Cleaner  Co.  v.  Dunn,  189  F.  R.  879,  1882. 

634,1911.  191Teese    v.    Huntingdon,    23 

188  Agawam   Co.   v.   Jordan,   7  Howard,  2,  1859. 

Wallace,  583,  1868;  Bates  v.  Coe,  ,92  Roemer  v.  Simon,  95  U.  S. 

98  U.  S.  31,  1878;  Planing-Ma-      220,     1877;    Brown    v.    Hall,    9 


CHAP.    XX.] 


ACTIONS    IN    EQUITY 


687 


§601.  The  fourth  defence  is  not  rightly  the  subject- 
matter  of  a  plea,  for  though  a  defendant  may  make  an 
oath  that  he  believes  the  patented  thing  to  be  without 
utility,  he  can  hardly  swear  that  it  is  certainly  so.193 


Blatch.  405,  1869;  Barker  v. 
Stowe,  15  Blatch.  49,  1878;  U.  S. 
Consolidated  Seeded  Raisin  Co. 
v.  Selma  Fruit  Co.,  195  F.  R.  264, 
1912. 

193  Rubber  Co.  v.  Goodyear,  9 
Wallace,  793,  1869;  Ames  &  Frost 
Co.  v.  Woven  Wire  Mach.  Co.,  59 
F.  R.  705,  1893. 

Editor's  Note:  The  state- 
ment that  only  matter  of  which 
the  defendant  had  personal  knowl- 
edge could  be  presented  by  plea 
in  bar  or  abatement  is  made  in 
substance  by  the  learned  author 
at  several  places  in  this  book 
(Sections  605,  607,  610,  614,  616, 
618,  621);  and  as  the  question  is 
not  free  from  doubt  the  original 
text  has  been  substantially  pre- 
served in  this  edition  wherever 
the  statement  occurs. 

It  is  true  that  by  Equity  Rule 
31  of  the  Equity  Rules  in  force 
prior  to  February  1,  1913,  it  was 
required  that  every  plea  to  a  bill 
in  equity  should  be  verified  by 
affidavit  of  the  defendant  to  the 
effect  that  the  plea  was  true  in 
fact.  This  requirement,  however, 
broadly  speaking,  was  a  pecu- 
liarity of  the  practice  prevailing 
in  the  United  States,  being  re- 
quired in  the  English  Chancery 
practice  only   in   those   cases  in 


which,  where  issue  was  joined  on 
the  plea,  evidence  upon  oath 
would  be  required  to  sustain  it 
at  the  hearing.  The  conclusion, 
however,  apparently  reached  by 
the  author  that  only  such  matter 
as  was  within  the  personal  knowl- 
edge of  the  defendant  could  be 
presented  by  plea  does  not  appear 
to  be  sustained  by  authority. 
That  proposition  was  of  course 
correct  as  a  practical  proposition 
if  the  facts  stated  in  the  plea  were 
averred  of  the  defendant's  own 
knowledge,  but  there  was  nothing 
to  prevent  a  defendant  from 
interposing  by  plea  a  defence 
based  on  facts  not  within  his 
personal  knowledge  but  which  he 
could  swear  to  on  information 
and  belief.  Indeed  the  propriety 
of  a  plea  in  a  particular  case  ap- 
pears to  be  determinable  on 
other  and  different  grounds  than 
as  stated  in  the  text.  Generally 
it  may  be  said  that  its  office  is 
to  "present  some  distinct  fact, 
which  of  itself  creates  a  bar  to 
the  suit  or  to  the  part  to  which 
the  plea  applies,  and  thus  to  avoid 
the  necessity  of  making  the  dis- 
covery asked  for  and  the  expense 
of  going  into  the  evidence  at 
large."  (Folly  v.  Kittson,  120  U. 
S.  303,  314,  and  other  cases  cited 


688 


ACTIONS    IN    KO.IUTY 


[chap.  XX. 


§  602.  The  fifth  and  sixth  defences,  even  before  the 
present  Equity  Rules  were  proper  only  for  an  answer, 
because  they  both  rest  on  evidence  of  abandonment  out- 
side of  the  bill,  and  therefore  cannot  be  interposed  by  a 
demurrer,  191  or  motion  to  dismiss.  Being  two  of  the  five 
defences  provided  for  by  Section  4920  of  the  Revised 
Statutes,  neither  of  them  are  proper  subject-matter  of  a 
plea.1115  And  an  answer  must  show  what  fact  or  facts 
constitute  the  abandonment  which  is  invoked  therein.196 


in  Street's  Federal  Equity  Prac- 
tice, Sections  827  and  828.)  Ac- 
cordingly it  is  held  that  it  is  not 
the  province  of  a  plea  to  interpose 
defences  that  go  to  the  merits 
and  relate  in  nowise  to  matters 
in  abatement  or  in  bar,  as  such 
defences  should  be  raised  by 
answer.  For  this  reason  a  plea 
of  non-infringement  in  a  suit  for 
infringement  of  a  patent  has  been 
considered  a  bad  plea  to  be  en- 
tertained only  under  special  cir- 
cumstances. (1  Street's  Federal 
Equity  Practice,  Section  836.) 

If,  however,  the  statement  of 
the  author  was  correct  when 
made,  it  apparently  has  had  no 
application  since  the  present 
Equity  Rules  went  into  effect 
on  February  1,  1913;  for  by  these 
Equity  Rules  pleas  as  such  were 
abolished  and  it  was  provided 
that  every  defence  heretofore 
presentable  by  plea  in  bar  or 
abatement  should  be  made  in 
the  answer  and  might  be  sepa- 
rately heard  and  disposed  of 
before  the  trial  of  the  principal 


case  in  the  discretion  of  the 
Court  (Equity  Rule  29);  and  as 
there  is  no  provision  in  the  Equity 
Rules  requiring  an  oath  to  the 
answer,  the  reasoning  advanced 
by  the  author  in  the  statement 
under  discussion  would  no  longer 
have  any  force.  Whether  or  not 
the  abolishment  of  the  require- 
ment of  an  oath  to  matter  pre- 
sentable by  plea  has  increased 
the  number  of  defences  which 
may  be  so  treated  after  ,  the 
manner  of  pleas  must  in  view  of 
the  absence  of  authorities  be  left 
for  the  courts  to  decide.  For 
further  consideration  of  the  sub- 
ject the  reader  is  referred  to  the 
treatment  of  it  contained  in 
Street's  Federal  Equity  Practice. 

194  United  States  Electric  Light- 
ing Co.  v.  Consolidated  Elec- 
tric Light  Co.,  33  F.  R.  869, 
1888. 

195Camrick  v.  McKesson,  8 
F.  R.  807,  1881. 

198  Western  Electric  Co.  v. 
Sperry  Electric  Co.,  58  F.  R.  192, 
1893;  Warren  Featherbone  Co.  v. 


CHAP.    XX. |  ACTIONS    IN    EQUITY  689 

§  603.  The  seventh  defence  is  not  proper  matter  for  a 
plea  because  it  involves  the  construction  of  the  claims  of 
the  letters  patent  in  suit.  Letters  patent  are  not  void 
merely  because  they  describe  something  not  shown  in  the 
original  application  therefor.  It  is  only  when  they  claim 
something  not  indicated  or  described  in  the  specification 
or  drawings  of  the  original  application,  that  they  are  ob- 
noxious to  the  seventh  defence.  The  question  what  letters 
patent  claim,  is  a  question  of  law  for  the  court,  and  is 
therefore  in  its  nature  not  one  which  can  properly  be 
raised  by  a  plea  in  an  action  in  equity.  Nor  can  this  de- 
fence be  raised  by  a  demurrer,  or  motion  to  dismiss,  be- 
cause, in  order  to  decide  upon  its  validity,  the  court  must 
not  only  construe  the  claims  of  the  patent,  but  must  also 
compare  the  claims  so  construed  with  the  original  appli- 
cation, and  that  application  must  be  introduced  for  the 
purpose,  as  a  matter  of  evidence.  This  defence  therefore 
now  and  at  all  times  was  properly  set  up  only  in  the  an- 
swer, except  where  the  complainant  took  the  initiative 
upon  the  subject.  In  that  case  the  complainant  must 
maintain  the  validity  of  his  patent  against  this  defence, 
even  where  it  is  not  specifically  interposed.197 

§  604.  The  eighth  defence  is  not  proper  matter  for  a 
plea,  because  it  is  one  of  the  five  which  the  statute  requires 
to  be  set  up  in  an  answer.198 

§  605.  Either  the  ninth  or  the  tenth  defence  may  be 
treated  as  pleas  where  the  defendant  knows  the  fact  of 
joint  or  of  sole  invention  upon  which  they  respectively 
stand.    Each  of  these  defences  rests  upon  a  single  matter 

Warner  Bros.  Co.,  92  F.  R.  991,  198  Revised    Statutes,     Section 

1899.  4920;   Carnrick  v.   McKesson,   8 

»» Michigan   Central   Railroad  F.    R.    807,    1881;    Ecaubert    v. 

Co.  v.  Car  Heating  Co.,  67  F.  R.  Appleton,  47  F.  R.  893,  1891. 
121,  1895. 


690  \'  TTONS    IN    EJQUITT  [CHAP.    XX. 

of  fact,  which,  if  decided  against  the  complainant,  is  fatal 

to  his  patent.  It  was  formerly  unwise  to  make  either  of 
these  defences  in  a  plea,  because  the  complainant  had  no 
alternative  but  to  file  a  replication,  and  because,  by  doing 
so,  he  might  foreclose  other  defences,  and  because  there 
was  always  a  possibility  that  the  court  would,  on  the 
evidence,  decide  that  the  invention  was  joint,  or  was 
several,  according  as  it  may  be  necessary  to  do  in  order  to 
sustain  the  patent.199  It  is  assumed  that  these  difficulties 
do  not  now  exist. 

§  606.  The  eleventh  defence  stands  in  the  same  category, 
in  respect  of  equity  pleading,  with  the  third,  fifth,  sixth, 
and  eighth,  and  the  answer  must  state  the  details  of  the 
facts  upon  which  the  eleventh  defence  is  based.200 

§  607.  The  twelfth  defence  cannot  be  made  by  a  mo- 
tion to  dismiss; 201  and  it  cannot  be  treated  as  a  plea  be- 
cause, though  the  defendant  might  be  able  to  make  oath 
that  he  is  a  person  skilled  in  the  art  to  which  the  invention 
covered  by  the  patent  appertains,  and  that  the  descrip- 
tion contained  in  that  patent  is  not  full,  clear,  concise, 
and  exact  enough  to  enable  him  to  make  and  use  the  same, 
he  could  not  make  oath  that  the  same  thing  is  true  of 
other  persons  skilled  in  that  art.2010 

§  608.  Nor  can  the  thirteenth  defence  be  treated  as  a 
plea,  because  it  depends  on  the  construction  of  the  claims 
of  the  letters  patent,  and  not  upon  any  matter  of  fact  to 
be  sworn  to  in  a  plea  or  proved  in  a  deposition.  But  this 
defence  can  be  made  by  a  motion  to  dismiss,  where  profert 

199  Pitts  v.  Hall,  2  Blatch.  229,  v.  Howland  Falls  Pulp  Co.,  70 
1851 ;  Blandy  v.  Griffith,  3  Fisher,      F.  R.  992,  1895. . 

616,  1869.  '         201Dade  v.   Boorum   &   Pease 

See  Note  193  of  this  Chapter.      Co.,  121  F.  R.  135,  1903. 

200  American  Sulphite  Pulp  Co.  201°  See  Note  193  of  this  Chap- 

ter. 


CHAP.    XX.]  ACTIONS   IN   EQUITY  691 

has  been  made  of  the  letters  patent,  or  they  have  other- 
wise been  made  a  part  of  the  bill.202  An  answer  was  for- 
merly a  proper  pleading  in  which  to  interpose  this  defence, 
and  of  course  it  is  so  now. 

§  609.  The  fourteenth  defence  also,  was  generally  re- 
quired to  be  set  up  in  an  answer.203  A  plea  was  not  ordi- 
narily suitable  for  the  purpose,  because  this  defence  de- 
pends primarily  upon  the  necessity  for  a  disclaimer,  and 
because  that  necessity  depends  upon  the  claim  being  ob- 
noxious to  one  or  more  of  the  first  three  defences,  and  be- 
cause the  third  defence  always,  and  the  first  and  second 
generally,  are  not  appropriate  for  pleas. 

§  610.  The  fifteenth  defence  is  not  proper  subject- 
matter  of  a  plea  because  it  primarily  depends,  either  upon 
the  original  patent  not  being  inoperative  or  invalid  by 
reason  of  a  defective  or  insufficient  specification,  or 
upon  its  not  being  invalid  in  part,  for  want  of  novelty.204 
Where  it  primarily  depends  upon  the  first  of  these  matters, 
it  depends  either  upon  the  construction  of  the  original 
letters  patent,  or  upon  proof  that  any  person  skilled  in 
the  art  to  which  the  invention  belongs,  could  from  the 
original  specification  make  and  use  the  same;  and  where 
it  depends  upon  the  second  of  these  matters,  it  depends 
upon  proof  that  everything  claimed  in  the  original  letters 
patent  was  novel.  None  of  these  matters  can  properly 
be  put  into  a  plea.  Statements  of  the  true  construction  of 
a  patent  cannot  be,  because  they  are  statements  of  law. 
Statements  that  any  person  skilled  in  the  art  can  make  and 
use  a  particular  invention,  from  a  particular  specification, 
are  hardly  proper  in  pleas,  because  a  defendant  ought 

202  Brickill  v.  Hartford,  49  F.  R.  2°4  Revised  Statutes,  Section 
373,  1892.  4916. 

203  Burden  v.  Corning,  2  Fisher, 
498,  1864. 


692  ACTIONS    IN    BQUITY  [(HAP.    XX. 

seldom  to  attempt  to  swear  what,  other  persona  can  or 
cannot  do.    And  statements  that  everything  claimed  in 

the  patent  of  another  was  novel  with  him,  are  not  proper 
for  a  plea,  because  a  defendant  can  never  know  that 
none  of  those  things  were  previously  known  or  used.204" 
Nor  can  this  defence  be  raised  by  a  motion  to  dismiss, 
unless  the  original  letters  patent  are  incorporated  in  the 
bill  for  infringement  of  its  reissue;  and  not  even  then 
can  it  be  so  raised,  unless  the  question  is  solely  one  of 
construction  of  the  original  letters  patent. 

§  611.  The  sixteenth  defence  depends  partly  on  the 
comparative  construction  of  the  original  and  the  reissue 
letters  patent,  and  partly  upon  evidence  that  the  delay  in 
applying  for  the  reissue  was  unreasonable.  Where  both 
the  original  and  the  reissue  are  proffered  or  incorporated 
in  the  bill;  this  defence  may  be  made  by  motion  to  dis- 
miss, because  the  court  then  has  every  necessary  means  of 
making  the  comparative  construction,205  and  because 
long  delay  will  be  held  to  be  unreasonable,  unless  it  is 
excused  in  the  bill.  Where  the  bill  omits  to  set  out  the 
original  patent,  this  defence  must  be  treated  as  ordinary 
matter  for  an  answer,  for  such  mixed  questions  of  law  and 
fact  are  wholly  unsuitable  to  a  plea.206 

§  612.  The  seventeenth  defence  depends  upon  the  com- 
parative construction  of  the  original  and  the  reissue  letters 
patent.  It  may  be  made  on  motion  to  dismiss,  where 
both  those  documents  are  proffered  or  otherwise  incor- 
porated in  the  bill.  If  the  original  letters  patent  are  not 
so  incorporated,  this  defence  may  be  made  regularly  in 

'-,"4°  See  Note  193  of  this  Chap-  International  Terra  Cotta  Lumber 

ter.  Co.   v.   Maurer,   44   F.    R.   619, 

205  Powder     Co.      v.     Powder  1890. 

Works,  98  U.  S.  126, 1878;  Wollen-  2M  Maxwell  v.  Kennedy,  8  How- 

sak  v.  Reiher,  115  U.  S.  96,  1884;  ard,  222,  1850. 


CHAP.    XX.  |  ACTIONS    IN    EQUITY  (){X}> 

the  answer;  but  is  never  proper  matter  for  a  plea,  because 
the  question  involved  is  one  of  construction  of  documents, 
and  not  a  question  of  fact  to  be  sworn  to  by  a  defendant, 
or  to  be  decided  upon  the  replication  of  the  complainant 
and  the  evidence  of  experts. 

§  613.  The  eighteenth  defence  may  be  made  by  a 
motion  to  dismiss  where  the  bill  is  based  on  the  prior 
patent,  as  well  as  on  its  alleged  double.207  But  a  plea 
would  not  be  suitable  to  this  defence,  unless  the  disputed 
claim  or  claims  in  the  subsequent  patent  can  be  plainly 
seen  to  be  identical  with  a  claim  or  claims  in  the  prior 
patent;  for  if  construction  must  be  resorted  to  in  order  to 
determine  identity,  or  want  of  identity,  between  the  claims 
of  the  two  patents,  the  question  is  one  of  law,  and  therefore 
improper  to  be  raised  by  a  plea  in  equity. 

§  614.  The  nineteenth  defence  is  suitable  for  a  plea,  if 
the  defendant  has  personal  knowledge  of  the  record  which 
he  pleads,  and  therefore  is  able  to  make  the  required  oath 
that  there  is  in  fact  such  a  record.207" 

§  615.  The  twentieth  defence  can  be  made  by  a  motion 
to  dismiss,  where  the  bill  shows  the  patent  had  expired 
when  the  doings  which  constitute  the  alleged  infringe- 
ment were  committed.  But  that  will  seldom  be  the  fact, 
for  the  expiration  relied  upon  in  such  cases  is  nearly  always 
due  to  the  expiration  of  some  foreign  patent  for  the  same 
invention,  and  not  to  anything  which  appears  on  the  face 
of  the  United  States  patent  in  suit.  Where  the  defence 
depends  upon  the  expiration  of  a  foreign  patent  which  is 
not  mentioned  in  the  bill,  it  cannot  be  taken  advantage 
of  by  motion  to  dismiss.  Nor  is  it  proper  matter  for  a 
plea;  because  it  depends  not  only  upon  the  existence  of  a 
foreign  patent,  but  also  upon  that  patent  being  for  the 

207  Russell  r.  Kern,  64  F.  R.  581,  20;ffl  See  Note  193  of  this  Chap- 

1894.  ter. 


694  ACTIONS    IN    EQ1  in  [CHAP.    XX. 

same  invention  as  the  patent  in  suit ;  and  because  this  last 
question,  except  where  the  two  patents  are  plainly  ident  i- 
cal,  is  one  of  construction  for  the  court; 20s  and  because 
defences  which  depend  upon  the  comparative  construction 
of  different  documents  are  not  proper  matter  for  a  plea.209 
§  616.  The  twenty-first  defence  is  proper  subject- 
matter  for  a  plea,  if  the  defendant  knows  that  the  complain- 
ant made  or  sold  specimens  of  the  patented  thing  during 
the  life  of  the  patent  without  marking  them  "patented," 
and  if  the  defendant  was  not  duly  notified  of  his  infringe- 
ment, or,  if  notified,  immediately  discontinued  to  in- 
fringe.210 This  defence  can  also  be  made  without  any 
special  statement  relevant  thereto  in  the  answer,  be- 
cause the  complainant  must  negative  it  in  his  bill  and  in 
his  evidence  in  chief,  or  suffer  the  operation  of  the  defence, 
whether  the  defendant  has  set  it  up  in  any  pleading  or 
not.211  But  this  defence  is  not  a  defence  to  a  prayer  for 
an  injunction,212  though  it  is  to  a  prayer  for  damages,213 
and  to  a  prayer  for  profits.214  Though  this  defence  need 
not  be  pleaded,  it  is  waived,  unless  it  is  presented  to  the 
court  on  the  hearing  of  the  case;  and  it  cannot  be  success- 
fully presented  for  the  first  time,  in  the  appellate  court 
to  which  the  case  may  be  taken.215 

208  De  Florez  v.  Reynolds,   17     Am.   Car  &  Foundry  Co.,    161 
Blatch.  436,  1880.  F.  R.  546,  1908. 

209  Lowry  v.  Aluminum  Co.,  56         See  Section  636. 

F.  R.  495,  1893.  214  Lowell  Mfg.  Co.  v.  Hogg,  70 

210  Revised    Statutes,    Section      F.  R.  787,  1895;  Michigan  Stove 
4900.  Co.  v.  Fuller-Warren  Co.,  81  F.  R. 

See  Note  193  of  this  Chapter.  379,   1896;  General  Electric  Co. 
211Dunlap    v.    Schofield,     152  v.  Star  Brass  Works,  109  F.  R. 
U.  S.  244,  1894.  950,     1901;    Westinghouse    Air- 
See  Sections  433a  and  496.  Brake  Co.  v.  New  York  Air-Brake 

212  See  Section  636.  Co.,  Ill  F.  R.  741,  1901. 

213  Goodyear  v.  Allyn,  6  Blatch.  215  Tuttle  v.  Claflin,  76  F.  R. 
33,  1868;    Morton   Trust   Co.    v.  227,  1896. 


CHAP.  XX.]        ACTIONS  IN  EQUITY  695 

§  617.  The  twenty-second  defence  may  be  made  by  mo- 
tion to  dismiss,  where  the  bill  sets  forth  copies  of  the  com- 
plainant's title  papers,  either  in  the  stating  part  or  as 
exhibits  attached  to  the  bill  and  thus  made  parts  thereof,  or 
where  the  bill  pleads  those  papers  according  to  their 
legal  effect,  and  in  such  a  way  that  the  title  appears  on 
the  face  of  the  bill  to  be  defective.  Where  the  bill  shows 
a  good  prima  facie  title,  but  where  the  defendant  knows 
that  one  of  the  papers  which  compose  its  chain  was  exe- 
cuted after  the  assignor  had  assigned  his  right  to  another, 
and  that  the  prior  assignment  was  recorded  in  the  Patent 
Office  within  three  months  after  its  date;  or  knows  that 
such  assignor  assigned  his  right  to  another  for  a  valuable 
consideration  more  than  three  months  after  the  making 
of  the  assignment  set  up  in  the  bill,  and  before  the  latter 
was  recorded  in  the  Patent  Office,  and  without  the  junior 
assignee  having  notice  of  the  senior  unrecorded  assign- 
ment, the  defendant  may  successfully  take  advantage  of 
those  facts  by  answer  as  though  they  were  set  up  in  a  plea 
under  the  former  Equity  Rules.215"  The  action  of  a  com- 
plainant will  be  defeated  by  evidence  of  either  of  these 
two  sorts  of  faults  in  his  title.216  No  defect  of  title  due 
to  an  outstanding  unrecorded  document  can  be  made 
available  as  a  defence  without  being  pleaded.217 

§  618.  The  twenty-third  defence  is  properly  the  subject- 
matter  for  a  plea  if  the  defendant  is  sure  of  the  fact  of  the 
license.  This  defence  when  stated  as  a  plea  must  state 
the  character  of  the  license  specifically.218 

§  619.  The  twenty-fourth  defence  should  be  treated  in 

2150  See  Note  193  of  this  Chap-  »»  California  Electric  Works  v. 
ter.  Fink,  47  F.  R.  583,  1891. 

218  Revised  Statutes,  Section  218  Jones  v.  Berger,  58  F.  R. 
4898.  1007,  1893. 

See  Note  193  of  this  Chapter. 


696  \<  TIOXS    IN    KgllTY  [chap.    \\. 

respecl  of  pleading,  in  the  same  way  as  the  twenty-third, 
and  thai  whether  the  release  pleaded  was  executed  before 
or  after  the  filing  of  the  bill. 

£  620.  The  twenty-fifth  defence  may  be  interposed  by 
a  motion  to  dismiss,  where  the  l)ill  sets  forth  the  claims 
alleged  to  be  infringed,  and  sets  forth  also  the  particular 
character  of  the  defendant's  doings.219  But  such  a  mo- 
tion will  be  dismissed,  except  where  non-infringement  is 
obvious  from  the  bill  of  complaint,  without  any  reference 
to  the  prior  art.  Where  such  a  motion  to  dismiss  is  denied, 
and  the  defendant  wishes  to  make  the  defence  of  non- 
infringement in  an  answer,  and  to  support  that  defence 
by  evidence,  he  may  do  so  within  five  days  after  the  mo- 
tion is  denied.'-'20 

The  rules  of  equity  pleading  which  were  developed  in 
England  would  justify  the  interposition  of  the  defence  of 
non-infringement  as  in  a  plea;  but  the  precedents  in  the 
United  States  courts  do  not  accord  with  those  rules  on  that 
subject.2-1  Those  precedents  indicate  that  pleas  will  not 
be  permitted  in  such  cases.  It  would  be  an  economical 
practice  to  so  prepare  bills  that  this  defence  could  be  made 
by  motion  to  dismiss,  but  this  is  usually  very  difficult  of 
accomplishment . 

§  621.  The  twenty-sixth  defence  may  be  made  as  in  a 
plea,  and  it  ought  to  be  made  so  in  every  case  where  the 
defendant  is  certain  that  he  can  prove  the  facts  which  he 
is  advised  amount  to  a  basis  for  an  estoppel.  Where  that 
defence  consists  of  res  judicata,  the  former  record  can  be 
introduced  in  evidence  without  being  specially  pleaded  in 

219  Collins  Chemical  Co.  v.  Capi-  m  Western  Electric  Co.  v. 
tol  City  Mfg.  Co.,  42  F.  R.  64,  North  Electric  Co.,  135  F.  R.  79, 
1890;  Gerard  v.  Safe  &  Lock  Co.,  1905;  Am.  Sulphite  Pulp  Co.  v. 
48  F.  R.  380,  1891.  Bayless  Pulp  &  Paper  Co.,   163 

220  Equity  Rule  29.  F.  R.  843,  1908. 


CHAP.  XX. |        ACTIONS  IN  EQUITY  697 

the  answer.222  If  the  former  record  is  of  an  action  at  law, 
it  may  be  examined  for  the  purpose  of  determining  just 
what  facts  were  found  by  the  verdict  of  the  jury.223  If 
•the  bill  asks  for  damages  and  profits  the  defendant  may 
set  up  a  former  action  at  law  between  the  same  parties  and 
a  judgment  for  the  plaintiff  which  will  be  a  bar  to  any  re- 
covery in  the  equity  suit  of  profits  or  damages  accru- 
ing subsequent  to  the  commencement  of  the  action  at 
law.224 

§  622.  The  twenty-seventh  defence  may  be  interposed 
by  a  motion  to  dismiss  where  the  bill  clearly  states  the 
time  when  the  infringement  was  committed  or  the  space 
of  time  during  which  it  was  carried  on.225  Statutes  of 
limitations  have  the  same  effect  upon  actions  in  equity 
in  the  Federal  courts,  that  they  have  upon  corresponding 
actions  at  law.226  Where  the  bill  simply  states  that  the 
infringement  occurred  during  the  life  of  the  patent,  and 
where  any  part  of  that  life  is  remote  enough  in  point  of 
time,  to  be  barred  by  either  the  national  or  any  applicable 
State  statute  of  limitations,  then  the  applicable  statute 
must  be  set  up  in  order  to  avail  the  defendant. 

§  622a.  The  twenty-eighth  defence  may  be  interposed 
by  motion  to  dismiss  or  by  answer  accordingly  as  the  de- 
fect appears  in  the  bill  or  extrinsically. 

§  623.  Prior  to  the  Equity  Rules  in  effect  February  1, 
1913,  a  general  replication  was  required  to  be  filed  by  the 
plaintiff  in  order  to  put  in  issue  those  points  wherein  the 
answer  disagreed  with  the  bill  but  no  special  replication 

222  Bradley  Mfg.  Co.  v.  Eagle  225  Brickill  v.  Hartford,  49  F.  R . 
Mfg.  Co.,  58  F.  R.  721,  1893.             374,  1892. 

223  Cheatham  Electric  Switch-  22«  Elmendorf  v.  Taylor,  10 
ing  Co.  v.  Transit  Development  Wheaton,  168,  1825;  Miller  v. 
Co.,  209  F.  R.  229,  1913.                    Mclntyre,    6    Peters,    66,    1832; 

224  Panoulias  v.  National  Equip-  Bank  of  United  States  v.  Daniel, 
ment  Co.,  198  F.  R.  493,  1912.  12  Peters,  56,  1838. 


698  \(  TIONS   IN    E5QUIT1  [chap.    XX. 

was  permitted.227    They  also  provided  that  whenever  the 

answer  of  the  defendant  should  not  be  excepted  to  or 
should  be  adjudged  or  deemed  sufficient,  the  plaintiff 
should  file  a  general  replication  and  no  further  pleading 
was  required  by  either  side.228  Both  general  and  special 
replications  have,  however,  been  abolished  229  and  it  is 
provided  that  unless  the  answer  assert  a  set-off  or  counter- 
claim no  reply  shall  be  required  without  special  order  of 
the  court  or  judge,  but  the  cause  shall  be  deemed  at  issue 
upon  the  filing  of  the  answer  and  any  new  or  affirmative 
matter  shall  be  deemed  to  be  denied  by  the  plaintiff.230 

§  624.  Before  tracing  further  the  common  course  of  an 
action  in  equity  for  infringement  of  a  patent,  it  is  expedient 
to  make  a  short  excursion  into  the  field  of  those  subordi- 
nate bills  which  are  sometimes  required  to  be  filed  before 
decrees  for  infringements  can  properly  be  entered.  Four 
kinds  of  such  bills  are  known:  1.  Supplemental  bills. 
2.  Bills  in  the  nature  of  supplemental  bills.  3.  Bills  of 
revivor.    4.  Bills  in  the  nature  of  bills  of  revivor. 

§  625.  A  supplemental  bill  is  required  where  the  original 
bill  was  filed  by  a  person  as  executor  or  administrator,  or 
as  assignee  in  bankruptcy  or  insolvency,  whenever  any 
other  person  succeeds  to  the  title  of  the  complainant  to 
act  in  that  representative  capacity.231  Such  a  bill  is  also 
necessary,  in  order  to  subject  the  estate  of  the  defendant 
to  a  decree,  where  he  is  adjudged  bankrupt  or  insolvent 
after  the  bill  against  him  is  filed.232  His  assignee  in  bank- 
ruptcy or  insolvency  is  the  proper  person  to  be  made  the 
defendant  to  such  a  bill.233     He  will  come  before  the  court 

227  Former  Equity  Rule  45.  232  Mitford   &   Tyler's   Equity 

228  Equity  Rule  66.  Pleading,  166. 

229  Equity  Rules  of  1913.  233  Sedgwick    v.    Cleveland,    7 

230  Equity  Rule  31.  Paige  (N.  Y.),  290,  1838. 

231  Story's     Equity     Pleading, 
Section  340. 


CHAP.    XX. J  ACTIONS    IN    EQUITY  699 

in  the  same  plight  as  that  of  the  bankrupt,  and  will  be 
bound  by  all  the  prior  proceedings  in  the  case.-'34  A  sup- 
plemental bill  is  also  a  proper  one  to  be  filed  against  a 
stranger  to  the  original  bill,  where  he  has  conspired  with  the 
original  defendant  to  infringe  the  patent  in  suit,  after  the 
original  defendant  was  enjoined  from  doing  so  himself,235 
or  where  without  the  element  of  conspiracy  he  has  pur- 
chased the  defendant's  infringing  business  pending  the 
suit.  In  such  case  the  purchaser  is  brought  within  the 
equitable  doctrine  that  one  taking  the  res  pendente  lite 
is  bound  by  the  judgment  of  the  court  as  to  that  res.236 
And  such  a  bill  is  proper,  where  a  patent  is  extended 
after  the  filing  of  the  original  bill,  if  the  defendant  contin- 
ues to  infringe  the  patent  after  the  extension  is  granted.237 

The  same  reasons  which  support  the  latter  rule  will  also 
support  a  supplemental  bill  based  on  a  new  patent  cover- 
ing some  feature  of  those  doings  of  the  defendant  which 
also  infringe  the  patent  originally  sued  upon ;  and  will  also 
support  such  a  bill  where  the  defendant  so  changes  the 
character  of  his  doings  pendente  lite,  as  to  make  them  in- 
fringe some  other  patent  of  the  complainant,  as  a  part 
of  the  same  acts  that  constitute  infringements  upon  the 
patent  upon  which  the  original  bill  was  based.  But  a 
good  title,  acquired  after  the  filing  of  an  original  bill,  can- 
not be  brought  into  a  case  by  a  supplemental  bill,  to  take 
the  place  of  the  bad  title  stated  in  the  original  bill.238 

A  supplemental  bill  which  merely  alleges  that  since 
the  original  bill  was  filed  the  defendant  has  modified  his 

234  Mitford  &  Tyler's  Equity  Am.  Electric  Co.,  141  F.  R.  998. 
Pleading,  166.  1905. 

235  Parkhurst    v.    Kinsman,    2  See  Section  407,  supra. 
Blatch.   72,    1848;  Western  Tel.  237  Reedy  v.  Scott,  23  Wallace, 
Mfg.  Co.  v.  Am.  Electric  Tel.  Co.,  352,  1874. 

137  F.  R.  603,  1905.  "38  Emerson    v.    Hubbard,    34 

236  Western   Tel.    Mfg.    Co.    v.      F.  R.  327,  1888. 


TOO  ACTIONS    IN    EQUITY  [CHAP.    XX. 

structure  but  in  such  manner  that  it  still  infringes,  is 
demurrable.  If  the  new  acts  infringe,  the  new  ads  may  be 
proved  upon  the  accounting  and  full  relief  obtained  under 
the  averments  of  the  original  bill.289  Another  court  holds 
that  it  is  permissible  to  bring  such  a  bill,  but  the  plaintiff 
need  not  do  so,  leaving  the  new  infringement  to  be  dealt 
with  in  an  independent  suit  for  the  reason  that  each  in- 
fringement raises  a  separate  cause  of  action.210  A  supple- 
mental bill  is  not  allowed  for  the  purpose  of  permitting  the 
plaintiff  to  bring  in  officers  of  a  defendant  corporation  to 
charge  them  with  individual  liability  after  an  accounting 
has  been  had.241 

§  626.  A  bill  in  the  nature  of  a  supplemental  bill  is 
called  for  where  the  original  bill  was  filed  by  a  person  in 
his  own  right,  whenever  that  right  passes  to  another  person 
by  voluntary  assignment,  or  passes  from  the  complainant 
to  his  assignee  in  bankruptcy  or  insolvency.242  This  rule 
applies  not  only  to  cases  where  the  entire  right  of  a  sole 
complainant  is  thus  transferred  pendente  lite,  but  also  to 
cases  where  the  right  of  one  of  several  complainants  is  so 
transferred,  and  to  cases  where  a  part  only  of  the  right  of  a 
sole  complainant  is  made  the  subject  of  a  voluntary  assign- 
ment after  the  filing  of  the  original  bill.243     And  a  bill 

239  Westinghouse  Air-Brake  Co.  River  Mfg.  Co.,  156  F.  R.  676, 

v.  Christensen  Eng.  Co.,  126  F.  R.  1907. 

764,  1904.  242  Story's     Equity     Pleading, 

Contra,   Chicago    Grain    Door  Section  349;  Ross  v.  Ft.  Wayne, 

Co.    v.    Chicago,    B.    &    Q.    R.  63  F.  R.  470,  1894;  Ecaubert  v. 

Co.,  137  F.  R.  101,  1905;  T.  B.  Appleton,   67   F.   R.   924,    1895; 

Woods  Sons  v.  Valley  Iron  Works,  Goss  Printing  Co.  v.  Scott,   134 

198  F.  R.  869,  1912.  F.    R.    880,    1905;    Leadam    v. 

2<°T.   B.  Woods'  Sons  Co.  v.  Ringgold,  140  F.  R.  611,  1905. 

Valley  Iron  Works,  198  F.  R.  869,  2«  Story's     Equity     Pleading, 

1912.  Section  346. 

*<>H.   C.   Cook   Co.   v.   Little 


CHAP.    XX. |  ACTIONS    IX    EQUITY  701 

in  the  nature  of  a  supplemental  bill,  even  if  filed  after  the 
expiration  of  the  patent,  may  be  maintained  in  equity, 
if  the  original  bill  was  filed  before  the  expiration  of  the 
patent,  and  could  have  been  thus  maintained.2" 

§  627.  A  bill  of  revivor  is  the  proper  means  of  reviving 
and  continuing  an  action  in  equity  for  infringement  of  a 
patent,  which  has  abated  by  reason  of  the  death  of  one  or 
more  of  the  parties  thereto.245  It  is  to  be  brought  by  or 
against  the  executor  or  administrator  of  the  deceased  party, 
and  not  by  or  against  his  heirs.246  When  such  a  bill  is 
filed,  if  the  facts  warrant  him  in  so  doing,  the  defendant 
may  file  an  answer  if  required  by  the  court  under  the 
Equity  Rules  denying  that  the  person  who  filed  the  bill 
was  entitled  to  do  so,247  or  interposing  some  statute  of 
limitation  applicable  to  bills  of  revivor.248  There  is  no  Fed- 
eral statute  of  that  kind,  but  the  relevant  statutes  of  the 
several  States  are  applicable  to  bills  of  revivor  in  Federal 
courts.249  Those  State  statutes  are  of  many  species. 
In  some,  the  limitation  begins  to  run  from  the  death  of  the 
deceased  complainant;  and  in  others,  from  the  time  his 
death  is  suggested  in  the  case;  and  in  others,  from  the 
time  when  a  scire  facias  to  revive  is  served  on  the  person 
entitled  to  revive.  The  length  of  the  limitation  also  varies 
in  the  different  States.  Perhaps  the  shortest  time  is  six 
months,  and  the  longest  eighteen. 

Where  a  bill  of  revivor  is  filed  by  the  proper  person 
within  the  proper  time,  the  action  will  stand  revived  with- 

244  Ross  v.  Ft.  Wayne,  63  F.  R.  246  Story's  Equity  Pleading, 
466,   1894;   George  W.  Jackson,      Section  354a. 

Inc.,  v.  Friestedt,  etc.,  Bar  Co.,  247  Equity  Rules  29  and  45. 

159  F.  R.  496,  1908.  248  Story's     Equity     Pleading, 

245  Kirk  v.  Du  Bois,  28  F.  R.      Section  831. 

460, 1886;  Head  v.  Porter,  70  F.  R.  249  Revised    Statutes,     Section 

498,  1895.  721;  Campbell  v.  Haverhill,   155 

U.  S.  610,  1895. 


702  actions    i\    EQUITY  [CHAP.    XX. 

out  any  pleading  being  filed  by  the  defendant.860  But 
where  a  defendant  dies  without  filing  a  sufficient  answer 
to  the  original  bill  and  the  amendments  thereto,  the  hill 
of  revivor  which  is  occasioned  by  his  death  ought  to  pray 
that  the  person  against  whom  it  seeks  to  revive  the  suit 
be  compelled  to  answer  the  original  bill  and  its  amend- 
ments, or  so  much  thereof  as  remains  unanswered.-'1 
After  an  action  in  equity  has  been  duly  revived,  it  pro- 
ceeds in  the  new  form,  unaffected  by  the  change  of  name ; 
and  all  the  testimony  theretofore  taken  may  be  thereafter 
used,  precisely  as  if  no  abatement  and  revivor  had  oc- 
curred.252 

§  628.  A  bill  in  the  nature  of  a  bill  of  revivor  is  required 
where  the  complainant  in  the  original  bill  assigned  the 
right  of  action  and  the  patent  upon  which  it  was  based, 
and  then  died  before  the  assignee  took  his  place  in  the 
action,  by  means  of  a  bill  in  the  nature  of  a  supplemental 
bill.  A  bill  of  the  latter  sort  will  not  answer  the  purpose, 
unless  it  is  filed  before  the  death  of  the  original  complain- 
ant; because  that  death  will  cause  an  abatement  of  the 
suit,  and  because  only  bills  of  revivor,  or  bills  in  the 
nature  of  bills  of  revivor,  can  revive  abated  actions  in 
equity.253  Bills  of  revivor  can  be  filed  only  by  privies  in 
law,  such  as  executors  and  administrators;  and  not  by 
privies  in  estate,  such  as  devisees  and  assignees.254  For 
the  latter  class  of  persons,  bills  in  the  nature  of  bills  of 
revivor  are  available;  and  by  means  of  such  a  bill,  an 
assignee  who  did  not  file  a  bill  in  the  nature  of  a  supple- 
mental bill  before  the  death  of  the  original  complainant, 

250  Equity  Rule  56.  252  Vattier  v.  Hinde,  7  Peters, 

251  Story's     Equity     Pleading,      265,  1833. 

Section  375;   Mitford  &  Tyler's         253  Equity  Rule  45. 
Equity  Pleading,  174.  254  Story's     Equity     Pleading, 

Section  379. 


CHAP.    XX. J  ACTIONS    IN    EQUITY  703 

may  draw  to  himself  the  benefit  of  the  original  action,  in 
whatever  stage  it  may  have  been  at  the  date  of  the  abate- 
ment.255 Such  a  bill  is  also  the  proper  means  of  reviving 
an  action  which  has  abated  at  the  death  of  the  adminis- 
trator or  executor  who  was  prosecuting  it  in  his  represent- 
ative capacity,  if  the  person  entitled  to  revive  represents 
the  original  testator  or  intestate,  and  not  the  deceased 
executor  or  administrator.256 

§  629.  A  bill  of  revivor  and  supplement  is  merely  a  com- 
pound of  a  supplemental  bill,  and  of  a  bill  of  revivor.257  It 
is  therefore  proper  to  be  filed  when  either  of  the  facts 
which  justify  a  supplemental  bill  and  either  of  the  facts 
which  require  a  bill  of  revivor,  occur  in  one  action.  So 
also,  any  two  or  more  of  the  four  sorts  of  bills  mentioned 
in  the  four  last  sections,  may  be  united  in  one  bill,  when- 
ever either  of  the  facts  which  require  either  of  those  bills, 
occurs  in  the  same  action  with  any  of  the  facts  which  re- 
quire any  of  the  others. 

§  630.  Leave  of  court  is  a  prerequisite  to  the  filing  of  sup- 
plemental bills,  or  bills  in  the  nature  of  supplemental 
bills;  and  it  is  to  be  obtained  upon  proper  cause  shown, 
and  due  notice  to  the  opposite  party.258  And  likewise  is 
the  case  with  bills  of  revivor.259 

§  631.  Pleadings  may  or  may  not  be  required  to  be 
filed  to  a  bill  of  revivor,  or  to  a  bill  in  the  nature  of  a  bill 
of  revivor.260  But  defendants  are  always  required  to 
plead  to  supplemental  bills,  and  to  bills  in  the  nature  of 
supplemental  bills.261     Where  a  bill  of  either  of  those 

255  Slack  v.  Walcott,  3  Mason,  2B8  Equity  Rule  34. 
511,  1825.  259  Equity  Rule  45. 

256  Story's     Equity  Pleading,  260  Equity  Rule  45. 
Section  382.  261  Equity  Rule  32. 

257Mitford   &   Tyler's    Equity 
Pleading,  177. 


Till  ACTIONS    IN    EQUITY  [CHAP.    XX. 

kinds  shows  on  its  face  that  the  person  who  filed  it  was 
not  a  proper  person  to  do  so,  the  objection  may  be  made 
by  a  motion  to  dismiss,283  and  formerly  when  that  fault 
existed,  but  did  not  appear  on  the  face  of  the  bill,  the  de- 
fence grounded  upon  it  was,  under  the  rules  in  force  prior 
to  February  1,  1913,  appropriate  for  a  plea.263  Presum- 
ably under  Equity  Rule  29  the  defence  could  now  be  set 
down  for  special  hearing.  Other  defences  can  be  made  to 
supplemental  bills,  or  to  bills  in  the  nature  of  supple- 
mental bills,  in  the  same  forms  and  in  the  same  circum- 
stances in  which  corresponding  defences  can  be  made  to 
original  bills  for  infringement.204 

§  632.  The  hearing  of  an  action  in  equity  for  infringe- 
ment of  a  patent,  may  take  place  before  one  of  the  judges 
of  the  court  sitting  alone,  or  before  several  judges  sitting 
together,  or  before  a  judge  and  a  jury,265  or  before  a  master 
in  chancery.266  Judges  constitute  the  best  tribunals  for 
the  purpose;  but  as  either  of  the  other  methods  of  trial 
may  be  resorted  to  at  the  will  of  the  court,  it  is  expedient 
to  outline  the  law  relevant  to  all  three. 

§  633.  An  interlocutory  hearing  by  a  judge,  in  a  patent 
action  in  equity,  is  one  which  occurs  after  the  evidence 
relevant  to  the  validity  of  the  patent  and  its  infringement 
by  the  defendant,  has  been  taken,  and  before  the  case  is 
referred  to  a  master  to  take  and  state  an  account  of  profits 
and  damages.  The  final  hearing,  which  occurs  after  the 
master  has  taken  that  account  and  filed  his  report,  gen- 
erally involves  nothing  but  the  correctness  of  that  report, 

292  Story's     Equity  Pleading,  265 18  Statutes  at  Large,  Part  3, 

Section  612.  Ch.  77,  Section  2,  p.  316. 

263  Story's  Equity  Pleading,  28a  Parker  v.  Hatfield,  4  Mc- 
Section  827.                                        Lean,  61,  1845. 

264  Story's     Equity  Pleading, 
Sections  611  and  826. 


CHAP.    XX.]  ACTIONS    IN    EQUITY  705 

and  it  therefore  may  appropriately  be  treated  in  the  chap- 
ter on  profits.  So  also,  the  preliminary  hearing,  which 
occurs  when  a  preliminary  injunction  is  applied  for,  may 
properly  be  discussed  in  the  chapter  on  injunctions.  The 
interlocutory  hearing  is  generally  the  pivotal  point  of  a 
litigation.  Where  it  results  in  the  success  of  the  defendant 
and  consequent  dismissal  of  the  bill,  it  becomes  a  final 
hearing. 

A  complainant  cannot  discontinue  his  action  in  equity 
for  infringement  of  a  patent,  when  it  is  called  for  a  hear- 
ing; without  showing  some  better  reason  for  wishing  so  to 
do,  than  an  intention  to  begin  a  new  suit  for  the  same  cause 
of  action,  and  a  hope  of  proving  a  stronger  case  in  the  new 
suit,  than  he  did  prove  in  the  one  before  the  court.267 

Questions  of  the  patentability  of  inventions  and  the 
construction  of  patents  concern  the  public,  and  therefore 
courts  will  examine  all  the  questions  involved  in  the  patent 
cases  brought  on  for  hearing  before  them,  and  will  not 
refrain  from  so  doing  at  the  suggestion  of  either  party 
or  of  both.268 

§  634.  Questions  of  law,  in  equity  patent  cases,  are  to 
be  decided  according  to  the  relevant  rules  of  law  and  equity 
in  force  in  the  United  States  courts.  The  sources  of  those 
rules  are  the  statutes  of  the  United  States,  and  the  de- 
cisions of  the  United  States  Supreme  Court  and  Court  of 
Appeals,  and  Circuit  Courts,  the  District  Courts,  and  those 
decisions  of  the  chancellors  of  England  which  were  made 
before  the  adoption  of  the  Constitution  of  the  United 
States.  Later  decisions  of  English  courts  sometimes  in- 
dicate what  the  law  is,  but  no  such  decision  is  of  any 
binding  authority  in  any  United  States  court.    Where  such 

-,fl7  American  Steel  &  Wire  Co.  MS  Millard  v.  Chase,  108  F.  R. 

v.    Mayer   &    England   Co.,    121      401,  1901. 
F.  R.  127,  1902. 


706  ACTIONS    IN    EQUITY  [CHAP.    XX. 

a  decision  is  strictly  relevant  to  a  question  at  bar,  and  is 
supported  by  good  reasoning,  il  may  be  followed  by  a, 
United  States  judge;  but  if  it  refers  to  a  substantially 
different  state  of  statute  law  from  that  to  which  United 
States  patent  cases  are  subject,  or  if  it  was  fallaciously 
reasoned  out  by  the  judge  who  delivered  it,  such  a  de- 
cision may  properly  be  disregarded  in  the  Federal  courts. 
The  decisions  of  State  courts  fall  in  the  same  category  in 
this  respect  with  the  modern  English  decisions,  except  in 
cases  where  the  United  States  statutes  direct  the  Federal 
courts  to  follow  the  laws  of  the  several  States.  In  those 
cases,  the  State  laws  are  binding  on  the  Federal  judges, 
not  because  the  States  have  any  authority  to  prescribe 
rules  to  Federal  courts,  but  because  the  national  legislature 
has  adopted  those  particular  State  laws,  instead  of  fram- 
ing and  enacting  corresponding  regulations  of  its  own. 

Where  a  question  arises  to  which  no  direct  answer  can 
be  found  in  the  recognized  sources  of  the  law,  it  becomes 
the  duty  of  the  judge  to  deduce  a  proper  answer,  by  means 
of  just  reasoning,  from  the  general  principles  of  law,  of 
equity,  and  of  justice.  He  may  find  assistance  in  that 
work  by  consulting  the  obiter  dicta  of  courts  and  the  com- 
mentaries of  text-writers;  but  no  obiter  dictum  and  no  text- 
book is  of  any  binding  authority.  The  points  of  law  ac- 
tually decided  by  the  United  States  Supreme  Court  are 
generally  binding  on  all  other  United  States  courts,  re- 
gardless of  the  reasons  which  support  them.269  There  is  an 
exception  to  this  rule,  where  the  Supreme  Court  has  de- 
cided the  same  question  both  ways.    In  such  a  case,  the 

269  American  Middlings  Purifier  Lynn,  55  F.  R.  518,  1893;  West- 
Co.  v.  Christian,  3  Bann.  &  Ard.  inghouse  Air-Brake  Co.  v.  Chris- 
44,  1877;  Goodyear  Dental  Vul-  tensen  Engineering  Co.,  103  F.  R. 
canite  Co.  v.  Davis,  3  Bann.  &  493,  1900. 
Ard.  116,  1877;  Green  v.  City  of 


CHAP.    XX.]  ACTIONS   IN   EQUITY  707 

last  decision  governs,  if  it  expressly  overruled  the  first.270 
If  it  simply  ignored  the  first,  it  may  have  resulted  from  the 
first  decision  not  being  called  to  the  attention  of  the  jus- 
tices who  rendered  the  second.  In  such  a  case  it  is  probar 
bly  the  duty  of  a  District  Court  to  follow  the  more  reason- 
able of  the  two  decisions,  regardless  of  seniority.  The 
points  of  law  actually  decided  by  the  Circuit  Court  of 
Appeals  of  any  circuit  are  binding  upon  all  the  District 
Courts  in  that  circuit; 271  but  not  on  any  court  in  any  other 
circuit.272  And  the  points  of  law  actually  decided  by  any 
judge,  holding  any  United  States  District  Court,  are  fol- 
lowed by  every  other  judge  holding  any  United  States 
District  Court,  unless  they  have  been  reversed  by  a  Cir- 
cuit Court  of  Appeals,  or  by  the  Supreme  Court,  or  are 
contrary  to  other  decisions  of  equal  or  superior  dignity, 
or  appear  to  be  erroneous.273  The  points  of  law  spoken 
of  in  this  section  include  the  construction  given  to  letters 
patent,  where  the  evidence  of  the  prior  art  and  other 
facts  relevant  to  that  construction  remain  unchanged,  as 
well  as  the  rules  of  law  in  general.274    But  where  a  Circuit 

""Tilghman    v.    Proctor,    125  Co.  v.  Barnard  &  Leas  Mfg.  Co., 

U.  S.  149,  1887.  43  F.   R.   532,   1890;  Zinsser  v. 

271  Edison  Electric  Light  Co.  v.  Krueger,  45  F.  R.  574,  1891; 
Bloomingdale,  65  F.  R.  214,  1894;  Enterprise  Mfg.  Co.  v.  Deisler, 
Thomson-Houston  Electric  Co.  46  F.  R.  854,  1891;  Campbell 
v.  Mahar,  112  F.  R.  534,  1898.  Mfg.  Co.  v.  Manhattan  Ry.  Co., 

272  American  Street  Car  Adver-  49  F.  R.  935,  1892;  Macbeth  v. 
tising  Co.  v.  Jones,  122  F.  R.  807,  Gillinder,  54  F.  R.  170,  1889; 
1903.  Office  Specialty  Co.   v.   Winter- 

273  Cary  v.  Lovell  Mfg.  Co.,  31  night  Mfg.  Co.,  67  F.  R.  928, 
F.  R.  345,  1887;  Rubber  Trim-  1895;  Maitland  v.  Graham,  96 
ming  Co.  v.  Rubber  Comb  Co.,  35  F.  R.  247,  1899. 

F.  R.  500,  1888;  Kidd  v.  Ransom,         274  National  Box  &  Paper  Co.  v. 

35  F.  R.  588,  1888;  Eastern  Paper  American  Paper  Box  Co.,  48  F.  R. 

Bag  Co.  v.  Nixon,  35  F.  R.  752,  913,  1892;  Sessions  v.  Gould,  60 

1888;    Consolidated    Roller   Mill  F.  R.  755,  1894. 


70S  actions    l\    BQ1  ITV  [CHAP.    XX. 

Court  of  Appeals,  or  circuit  justice,  or  circuit  judge,  or  any 
judge  holding  a  District  or  Circuit  Court  has  decided  the 
point  both  ways,  the  last  of  those  decisions  is  the  one  which 
is  to  be  regarded,  if  it  expressly  reversed  the  first.-7.  If 
it  simply  ignored  the  first,  the  two  decisions  will  respec- 
tively weigh  according  to  the  weight  of  the  reasons  which 
respectively  support  them. 

Adjudicated  cases  are  binding  precedents  in  the  law 
only  where  the  questions  of  law  involved  in  those  cases 
were  actually  submitted  for  decision  therein;  and  such  a 
submission  is  not  involved  in  raising  those  questions  in  the 
pleadings,  nor  in  controverting  them  in  the  evidence,  if 
one  party  or  the  other  abandons  those  questions  at  the 
hearing.276 

§  635.  Questions  of  fact  depend  upon  the  evidence  in 
the  particular  cases  in  which  they  arise,  except  so  far  as 
they  depend  upon  matters  of  which  courts  take  judicial 
notice.  Questions  of  fact  in  patent  cases  often  require 
for  their  solution  a  severely  logical  process  of  reasoning 
from  the  testimony  in  the  record.  It  sometimes  occurs 
that  the  evidence  in  a  number  of  cases,  pending  in  a  num- 
ber of  District  Courts,  is  substantially  the  same.  Where 
one  such  case  has  been  carefully  argued  and  deliberately 
decided  in  a  District  Court,  all  the  other  District  Courts 
are  apt  to  follow  that  decision; 277  except  where  a  different 
decision  is  required  by  a  different  state  of  evidence. -7s 
In  fact  in  the  second  circuit  the  rule  has  been  laid  down 

275  Brown  Mfg.  Co.  v.  Mast,  53  Wright,  65  F.  R.  99,  1890;  Cutler- 

F.  R.  582,  1892.  Hammer    Co.    v.    Hammer,    124 

™  Celluloid  Mfg.  Co.  v.  Tower,  F.  R.  222,  1903. 

26  F.  R.  452,  1885.  278  Barnes  Sprinkler  Co.  v.  Wal- 

277  Hammerschlag  Mfg.  Co.  v.  worth   Mfg.   Co.,   51   F.    R.   89, 

Bancroft,   32   F.    R.    585,    1887;  1892;  Gates  Iron  Works  v.  Kim- 

Hammerschlag  Mfg.  Co.  v.  Spald-  hell  &  Cobb  Stone  Co.,  79  F.  R. 

ing,  35  F.  R.  67,   1888;  Pratt  v.  78,  1897. 


CHAP.    XX.]  ACTIONS   IN    EQUITY  709 

in  a  per  curiam  opinion  that  the  importance  of  securing 
uniformity  of  decision  is  so  great  "that  a  decision  of  a 
court  of  co-ordinate  jurisdiction  should  be  followed  in 
every  case  where  the  questions  presented  can  fairly  be 
regarded  as  doubtful."279  The  rule  in  the  sixth  circuit  is 
expressed  in  equally  vigorous  terms.-80 

Still  it  is  the  duty  of  every  court  to  decide  cases  right ; 
and  to  that  end  every  judge  is  bound  to  decide  his  cases 
according  to  his  own  convictions,  rather  than  according 
to  the  convictions  of  any  other  judge  of  any  co-ordinate 
tribunal;  and  it  is  only  in  cases  of  doubt  in  the  mind  of  the 
judge,  that  comity  comes  into  operation  and  suggests  a 
uniformity  of  ruling,'281  a  proposition  which  is  all  the  more 
true  when  the  doubt  is  in  the  minds  of  the  appellate 
court.282 

A  serious  practical  question  often  arises  when  a  Court 
of  Appeals  of  one  circuit  has  held  a  patent  invalid  and 
afterwards  a  Court  of  Appeals  in  another  circuit  holds  the 
patent  valid.  In  such  cases  it  has  been  held  in  the  second 
circuit  that  the  decree  in  the  suit  holding  the  patent  valid 
should  except  from  its  operation  articles  acquired  from  de- 
fendants to  suits  in  circuits  where  the  patent  was  held 
invalid.283    It  has  been  held,  however,  that  such  a  decree 

279  Gormley  &  Jeffrey  Tire  Co.  2S0  Cincinnati  Butchers'  Supply 

v.  United  States  Agency,  177  F.  R.  Co.  v.  Walker  Bin  Co.,  230  F.  R. 

691,    1910;   Calculagraph   Co.   v.  453,  1916. 

Automatic  Time  Stamp  Co.,  187  281  Mast,      Foos      &      Co.     v. 

F.  R.  276,  1911;  Warren  Bros.  v.  Stover  Mfg.  Co.,  177  U.  S.  488, 

City  of  New  York,  187  F.  R.  831,  1900. 

1911;  Doelger  v.  German-Ameri-  282Eldred     v.     Kirkland,     130 

can  Filter  Co.,   204  F.   R.  274,  F.  R.  342,  1904. 

1913;    National   Electric   Signal-  283  Consolidated    Rubber    Tire 

ling  Co.  v.  Telefunksen  Wireless  Co.  v.  Diamond  Rubber  Co.,  162 

Telegraph  Co.,  221   F.   R.  629,  F.  R.  892,  1908. 
1915. 


710 


actions    iv    EQUITY 


kii.\r.   xx, 


should  not  be  so  construed  as  to  permit  such  articles  to 
ho  used  or  sold  in  the  second  circuit.  s! 

The  relations  between  the  different  Circuit  Courts  of 
Appeals,  in  respecl  of  following  the  decisions  of  each  other, 
on  questions  of  fact  in  patent  cases,  are  the  same  as  the 
corresponding  relations  between  the  different  District 
Courts  of  the  United  States.285 

Where  a  question  of  fact  in  a  patent  case,  has  been  de- 
cided by  a  Circuit  Court  of  Appeals,  that  decision  is  bind- 
ing in  all  cases  in  the  District  Courts  of  the  same  circuit, 
wherein  the  evidence  is  substantially  the  same,286  and  w  ill 
be  followed  by  the  Circuit  Court  of  Appeals  in  a  later 
suit  on  the  same  patent  in  which  substantially  the  same 
evidence  is  presented  even  though  the  claim  of  invalidity 
was  not  urged  on  the  prior  appeal.287  And  where  a  ques- 
tion of  fact  in  a  patent  case,  has  been  decided  by  the  Su- 
preme Court,  that  decision  is  conclusive  in  all  other  patent 
cases,  so  far  as  the  evidence  is  substantially  identical 
with  that  before  the  Supreme  Court.288  But  the  evidence 
must  be  taken  in  the  subsequent  cases,  and  cannot  be  im- 
ported from  the  record  of  the  Supreme  Court  or  of  the 
Court  of  Appeals;  though  it  is  not  necessary  or  proper  to 
introduce  evidence  to  prove  what  evidence  was  before  the 


284  Hurd  v.  Seim,  189  F.  R.  591, 
1911. 

285  Hanifen  v.  Price,  102  F.  R. 
509,  1900;  Dowagiac  Mfg.  Co.  v. 
Breiinan  &  Co.,  127  F.  R.  143, 
1903;  Westinghouse  Elec.  &  Mfg. 
Co.  v.  Stanley  Inst.  Co.,  133  F.  R. 
167,  1904. 

286  Bowers  Dredging  Co.  v.  New 
York  Dredging  Co.,  80  F.  R.  119, 
1897. 


287  Crier  v.  Inners,  170  F.  R. 
324,  1909. 

288  American  Middlings  Purifier 
Co.  v.  Christian,  3  Bann.  &  Ard. 
44,  1877;  American  Bell  Teh- 
phone  Co.  v.  Southern  Telephone 
Co.,  34  F.  R.  796,  1888;  Birming- 
ham Cement  Mfg.  Co.  v.  Gates 
Iron  Works,  78  F.  R.  351,  1896; 
Westinghouse  Air-Brake  Co.  r. 
Christensen  Engineering  Co.,  113 
F.  R.  595,  1901. 


CHAP.    XX.]  ACTIONS   IN    EQUITY  711 

higher  court,  or  to  prove  what  decision  was  rendered  on 
that  evidence;  those  two  points  being  left  to  the  examina- 
tion of  the  reports  and  records  of  the  higher  tribunal.289 

The  points  stated  in  the  last  three  paragraphs  relate  to 
prior  cases  which  were  litigated  in  earnest  between  oppos- 
ing parties;  and  those  points  do  not  apply  to  any  case 
which  was  collusively  conducted,  or  which  ceased  to  be 
an  adversary  action  before  the  hearing  which  resulted  in 
the  decision  of  the  case.290 

§  636.  The  evidence  which  a  complainant  is  required  to 
produce  to  support  his  bill  in  an  action  in  equity,  is  the 
same  as  that  which  a  plaintiff  in  an  action  at  law  is  re- 
quired to  introduce  in  support  of  his  declaration;  except 
that  in  an  action  in  equity  the  complainant  must  introduce 
evidence  to  excuse  his  delay  in  filing  his  bill,  where  a  long 
delay  to  file  it  occurred  after  the  infringement  took  place; 
and  except  that  evidence  of  danger  of  infringement,  may 
take  the  place  of  evidence  of  actual  infringement; 291  and 
except  that  a  court  of  equity  may  take  notice  of  its  own 
records  in  other  cases,  when  ascertaining  the  state  of  the 
prior  art; 292  and  except  that  till  after  the  interlocutory 
hearing,  the  complainant  need  introduce  no  evidence 
relevant  to  profits  or  to  damages,  or  even  showing  notice 
of  infringement  by  " marking  patented"  or  otherwise.293 

289  Green  v.  City  of  Lynn,  55  In  the  absence  of  further  show- 
F.  R.  519,  1893.  ing  evidence  of  a  single  act  of  in- 

290  Western  Electric  Co.  v.  An-  fringement  is  sufficient  to  show 
thracite  Telephone  Co.,  100  F.  R.  danger  of  further  infringement. 
301, 1900,  and  113  F.  R.  834, 1902.  Luten  v.  Dover  Construction  Co., 

291  National  Meter  Co.  v.  Thorn-  189  F.  R.  405,  1911. 

son  Meter  Co.,   106  F.  R.  531,  292  Cushman  Paper  Box  Mach. 

1900.    The  evidence  to  establish  Co.  v.  Goddard,  95  F.  R.  666, 

infringement  must  be  convincing;  1899. 

Marcus  v.  Sutton,  124  F.  R.  74,  293  Underwood  Typewriter  Co. 

1903.  v.  Elliott-Fisher  Co.,   171  F.  R. 


712  actions    l\    EQUITY  [CHAP.    \\. 

When  the  complainant  has  some  evidence  tending  to 
show  the  character  of  the  defendant's  doings,  and  thai 
those  doings  infringe  the  complainant's  patent,  a  court 
of  equity  has  power  to  order  the  defendant  to  allow  the 
complainant,  or  some  expert  or  other  person  representing 
him,  to  inspect  the  defendant's  doings  for  fuller  accuracy 
of  knowledge.-91  But  this  power  will  not  be  exercised, 
where  a  bill  is  filed  upon  a  conjecture  of  infringement  with 
the  hope  of  obtaining  evidence  to  that  effect  afterward.-" 
Mere  suspicion  of  infringement  is  not  sufficient  to  justify 
the  issuance  of  an  order  for  inspection.296  All  averments 
of  a  bill  not  specifically  denied  except  allegations  of 
amount  of  damage  are  deemed  admitted.297 

§  637.  The  evidence  which  is  required  to  support  either 
of  the  twenty-eight  defences  which  are  common  to  actions 
at  law  and  actions  in  equity,  is  the  same  in  both  those 
forms  of  proceeding.  Of  the  two  defences  which  are  pe- 
culiar to  equity,  that  of  non-jurisdiction  is  one  which  sel- 
dom or  never  requires  any  evidence  to  support  it;  and 
laches  is,  -prima  facie,  supported  by  the  fact  of  the  long 
lapse  of  time  which  is  deducible  from  the  complainant's 
proofs,  where  such  a  defence  has  any  foundation  at  all. 
Where  the  complainant  introduces  evidence  to  excuse 
the  delay,  it  may  be  necessary  for  the  defendant  to  nega- 
tive that  evidence  by  other  proof,  or  to  prove  facts  which 
show  the  complainant's  excuse  to  be  invalid  or  insufficient. 

§  638.  The  testimony  in  patent  causes  as  in  other  ac- 

116,    1909;    but    see   Byerley   v.  »» Dobson  v.  Graham,  49  F.  R. 

Philip  Carey  Co.,  225  F.  R.  77,  17,  1889;  Stokes  Bros.  Mfg.  Co.  r. 

1915.  Heller,  56  F.  R.  298,  1893. 

294  Diamond  Match  Co.  v.  Osh-  298  Eibel   Process   Co.  v.  Rem- 

kosh  Match  Works,  63  F.  R.  984,  ington-Martin  Co.,  197  F.  R,  760, 

1894;  Wilson  v.  Keeley,  43  0.  G.  1912. 

511,  1888;  Rowell  v.  Wm.  Koehl  29' Lovell  v.  Johnson,  82  F.  R. 

Co.,  194  F.  R.  446,  1912.  206,  1897;  Equity  Rule  30. 


CHAP.    XX.]  ACTION'S    IN    EQCII'V  713 

tions  in  equity  is  taken  orally  in  open  court,  with  certain 
exceptions.298  The  court  passes  upon  the  admissibility 
of  all  evidence  as  in  an  action  at  law.  When  evidence  is 
offered  and  excluded  and  the  party  against  whom  the  rul- 
ing is  made  excepts  thereto  at  the  time,  it  is  provided 
that  the  court  shall  take  and  report  so  much  thereof  or 
make  such  a  statement  respecting  it  as  will  clearly  show 
the  character  of  the  evidence,  the  form  in  which  it  was  of- 
fered, the  objection  made,  the  ruling  and  the  exception. 
If  the  appellate  court  shall  be  of  opinion  that  the  evi- 
dence should  have  been  admitted  it  may  not  reverse  the 
decree  unless  it  be  clearly  of  opinion  that  material  preju- 
dice will  result  from  an  affirmance,  in  which  event  it  must 
direct  that  further  steps  be  taken  as  justice  may  require.299 

In  special  instances,  however,  the  court  may  upon  appli- 
cation of  either  party  when  allowed  by  statute  or  for  good 
and  exceptional  cause  for  departing  from  the  rule  stated 
in  the  foregoing  paragraph,  permit  the  deposition  of  named 
witnesses  to  be  used  before  the  court  or  upon  a  reference 
to  a  master  to  be  taken  before  an  examiner  or  other 
named  officer  upon  terms  specified  in  the  order.300 

"In  a  case  involving  the  validity  or  scope  of  a  patent 
or  trade-mark,  the  district  court  may,  upon  petition,  order 
that  the  testimony  in  chief  of  expert  witnesses,  whose 
testimony  is  directed  to  matters  of  opinion,  be  set  forth 
in  affidavits,  and  filed  as  follows:  Those  of  the  plaintiff 
within  forty  days  after  the  cause  is  at  issue;  those  of  the 
defendant  within  twenty  days  after  plaintiff's  time  has 
expired;  and  rebutting  affidavits  within  fifteen  days  after 
the  expiration  of  the  time  for  filing  original  affidavits. 
Should  the  opposite  party  desire  the  production  of  any 
affiant  for  cross-examination,  the  court  or  judge  shall, 
on  motion,  direct  that  said  cross-examination  and  any 

29S  Equity  Rule  46.         2"  Equity  Rule  46.  300  Equity  Rule  47. 


714  ACTIONS    IN    EQUITY  [CHAP.    XX. 

re-examination  take  place  before  the  court  upon  the  trial, 
and  unless  the  affiant  is  produced  and  submits  to  cross- 
examination  in  compliance  with  such  direction,  his  affida- 
vit shall  not  be  used  as  evidence  in  the  cause."301 

§  G40.  Depositions  taken  in  any  other  case  may  be 
used  in  any  action  in  equity,  if  each  party  therein  was  a 
party  to  the  action  in  which  they  were  taken,  or  is  in 
privity  with  a  party  to  that  action,  and  if  the  court 
grants  a  motion  to  use  them.302  But  where  either  party 
in  the  new  action  was  not  a  party  to  the  former  one,  and 
is  not  in  privity  with  any  party  thereto,  no  deposition 
taken  in  the  former  suit  can  be  used  in  the  new  one;  for 
no  deposition  can  be  read  against  a  party,  who  could 
not  read  it  in  his  favor  if  it  were  favorable  to  him.303 

§  641.  Documentary  evidence  is  generally  introduced 
before  the  examiner,  within  the  same  time  that  the  oral 
testimony  is  required  to  be  taken;  and  that  is  the  neces- 
sary course  where  documents  require  to  be  proved  by 
oral  testimony.  Each  party  ought  to  introduce  his 
documentary  evidence,  when  taking  his  own  testimony; 
and  if  he  introduces  such  evidence  when  the  testimony 
of  the  other  party  is  being  taken,  it  will  be  treated  as  if  it 
was  introduced  afterward,  when  the  introducer  was  taking 
his  own  testimony,  if  such  subsequent  taking  of  testimony 
was  proper.304 

Stipulations  are  extensively  made  in  patent  cases  on 
undebatable  points  of  fact,  and  when  made  they  are 
binding  upon  the  parties,  unless  they  are  canceled  or 

301  Equity  Rule  48.  1810;  Barker  v.  Shoots,  18  F.  R. 

3°*  Clow  v.  Baker,  36  F.  R.  692,  652,    1884. 

1888.  304Cimiotti    Unhairing    Co.    v. 

303  Dale  v.   Rosevelt,    1   Paige  American  Fur  Refining  Co.,  120 

(N.    Y.),    35,    1828;    Paynes    v.  F.  R.  673,  1903. 
Coles,    1    Munford    (Va.),    394, 


CHAP.    XX.]  ACTIONS   IN   EQUITY  715 

amended  by  agreement  of  the  parties  or  an  order  of  the 
court.305  But  courts  will  allow  a  party  to  withdraw  from 
an  inadvertently  made  stipulation,  when  it  is  found  to 
be  out  of  conformity  to  the  truth,  and  when  such  a 
withdrawal  is  not  unjust  to  the  opposite  party  to  the 
action.306 

Documents  which  prove  themselves,  may  be  introduced 
on  the  hearing  without  having  been  put  in  evidence  be- 
fore the  examiner.307  And  documents  which  require  to 
be  proved,  may  be  introduced  on  or  even  after  the  hear- 
ing, with  the  consent  of  the  court.308  Where  a  document 
thought  by  a  party  to  be  material  to  his  case,  is  known 
to  be  in  the  possession  of  the  opposite  party,  its  pro- 
duction in  court  may  be  compelled  by  a  subpoena  duces 
tecum. m 

§  642.  A  jury  of  not  less  than  five  and  not  more  than 
twelve  persons  may  be  empanelled  by  any  United  States 
District  Court,  when  sitting  in  equity  for  the  trial  of  a 
patent  cause,  for  the  purpose  of  submitting  to  them  such 
questions  of  fact  in  the  case  as  the  court  shall  deem  it 
expedient  to  submit;  and  the  verdict  of  such  a  jury  is 
treated  in  the  same  manner  and  with  the  same  effect  as 
in  the  case  of  issues  sent  from  chancery  to  a  court  of  law 
and  returned  with  such  findings.310  Therefore  such  a 
verdict  is  only  advisory,  and  never  conclusive  upon  the 
court.  If  the  judge  disagrees  in  opinion  with  the  jury 
relevant  to  the  questions  of  fact  covered  by  the  verdict, 

305  General  Electric  Co.  v.  Wag-  308  Mast,  Foos &  Co.  v.  Windmill 

ner  Electric  Mfg.  Co.,  123  F.  R.  &  Pump  Co.,  68  F.  R.  224,  1895. 

103, 1903.  3M  Edison  Electric  Light  Co.  v. 

308  Carnegie  Steel  Co.  v.  Cam-  United  States  Electric  Lighting 

bria  Iron  Works,  185  U.  S.  444,  Co.,  45  F.  R.  55,  1891. 

1902.  31°  18  Statutes  at  Large,  Part  3, 

307  Knapp  v.  Shaw,  15  F.  R.  115,  Ch.  77,  Section  2,  p.  316;  Gray  v. 

1883.  Halkyard,  28  F.  R.  854,  1886. 


7H'»  ACTIONS    IV    EQUITY  [CHAP.    XX. 

he  may  enter  a  decree  contrary  (hereto.'"1  But  the  regu- 
lar course  of  proceeding  in  such  a  case  is  t<>  enter  a  decree 
in  accordance  with  the  verdict,  unless  the  party  against 
whom  it  was  found  moves  the  court  for  a  new  trial.  A 
new  trial  in  such  a  case  is  granted  or  refused  according 
as  the  judge  thinks  the  verdict  was  right  or  was  wrong: 
and  without  special  regard  to  any  errors,  or  freedom  from 
errors,  which  characterized  the  admission  or  rejection 
of  evidence  on  the  trial,  or  the  instructions  which  were 
given  or  those  which  were  refused  by  the  judge. 

Where  a  new  trial  is  refused,  and  a  decree  is  entered  in 
accordance  with  the  verdict,  if  the  defeated  party  would 
take  the  case  to  the  Circuit  Court  of  Appeals  for  review, 
he  must  do  so  on  appeal  from  the  decree,  and  not  upon  a 
writ  of  error  as  from  a  judgment  entered  upon  a  verdict 
in  an  action  at  law\  In  a  properly  prepared  case,  the  Cir- 
cuit Court  of  Appeals  will  decide  whether,  on  the  whole, 
the  decree  was  right  or  was  wrong;  but  it  wall  not  pass  upon 
the  correctness  or  incorrectness  of  the  rulings  of  the  judge 
at  the  jury  trial.  Therefore,  the  evidence  taken  at  the 
jury  trial  should  be  preserved,  if  there  is  any  intention 
to  take  the  case  to  the  Circuit  Court  of  Appeals,  but  no 
bill  of  exceptions  in  the  case  is  necessary  or  is  proper.312 

§  643.  A  master  in  chancery  may  be  directed  by  a 
District  Court,  with  the  consent  of  the  parties,  to  hear  and 
decide  any  or  all  the  questions  in  a  patent  case,  and  to 
report  his  decision  to  the  court.313  But  such  a  report  is 
advisory  only,  and  no  decree  will  be  entered  upon  it,  if 
either  party  can  convince  the  judge  that  it  was  wrong.    Ex- 

311  Silsby  v.  Foote,  1  Blatch.  Register  Co.  v.  Navy  Cash- 
545,  and  20  Howard,  290, 1857.  Register  Co.,  99  F.  R.  565,  1900; 

312  Watt  v.  Starke,  101  U.  S.  Western  Union  Telegraph  Co.  v. 
247,  1879.  American    Bell    Telephone    Co., 

313  Parker  v.   Hatfield,   4   Mc-  105  F.  R.  686,  1900. 
Lean,  61,   1845;  National  Cash-  But  see  Equity  Rule  59. 


CHAP.    XX. |  ACTIONS    IN    EQUITY  717 

ceptions  to  the  master's  report  are  the  proper  means 
of  appeal  from  his  conclusion.  If,  on  such  exceptions, 
the  judge  concludes  that  the  master  was  wrong  in  any 
respect,  he  may  send  the  case  back  to  him,  with  directions 
to  make  a  new  report,  and  with  prescriptions  of  new  cri- 
teria by  which  to  make  it; 314  or  he  may  proceed  to  try 
the  questions  himself,  if  that  course  appears  to  be  more 
convenient.  The  rules  of  practice  which  regulate  the 
taking  of  evidence  by  masters  in  chancery,  and  regulate 
the  hearings  before  them,  and  the  filing  of  exceptions  to 
their  reports,  are  the  same,  when  they  are  directed  to 
ascertain  the  truth  relevant  to  such  questions  as  novelty 
or  infringement,  that  they  are  in  the  more  common  cases 
wherein  they  are  directed  to  take  and  state  accounts  of 
profits  and  damages. 

§  644.  An  interlocutory  decree,  in  an  equity  patent 
case,  is  a  decree  which  adjudges  that  the  patent  sued  upon 
is  valid ;  and  that  the  defendant  has  infringed  it ;  and  usu- 
ally that  a  master  in  chancery  be  directed  to  take  and  re- 
port an  account  of  the  profits  which  the  defendant  realized 
from  that  infringement,  and  of  the  damages  which  the 
complainant  sustained  by  reason  thereof;  and  sometimes 
that  the  defendant  be  permanently  enjoined  from  further 
infringement.315  The  decree  for  an  accounting  is  not, 
however,  a  matter  of  course  and  may  be  refused  when 
it  appears  that  the  defendant  has  made  only  a  small 
number  of  infringing  articles  and  has  discontinued  in- 
fringement before  suit  brought,  and  no  substantial  re- 
covery could  be  had.316     The  accounting  may  also  be 

'"Cawood   Patent,   94  U.   S.      F.   R.  21,   1892;  Brush  Electric 
708,  1876.  Co.  v.  Western  Electric  Co.,  76 

318  Dudley    E.    Jones    Co.    v.      F.  R.  761,  1896. 
Munger  Mfg.  Co.,  50  F.  R.  785,  316  Perkins      Electric      Switch 

1892;   Richmond  v.  Atwood,  52      Mfg.  Co.  v.  Yost  Electric  Co.,  189 

F.  R.  625,  1910. 


718  ACTIONS    IN    i:im  iri  [CHAP.    XX. 

denied  by  reason  of  laches  on  the  pari  of  the  plaintiff  in 
bringing  suit  although  the  laches  shown  be  not  sufficient 
for  a  defence  to  the  application  for  injunctive  relief.817 
If  the  bill  prays  for  an  account  of  damages  and  profits 

and  actual  notice  to  the  defendant  is  relied  upon  instead 
of  constructive  notice  by  ''marking  patented,"  the  de- 
cree will  granl  an  accounting  only  as  to  infringements 
committed  subsequently  to  the  receipt  of  the  notice,  if  it 
is  not  shown  that  infringements  committed  after  receipt 
of  notice  were  substantial  in  amount.318  It  may  be  ques- 
tioned as  to  whether  or  not  it  is  proper  to  decree  an  ac- 
counting in  any  event  if  it  is  not  made  to  appear  that 
there  are  at  least  some  infringements  of  which  an  account 
could  be  rendered.319 

Where  only  part  of  the  claims  in  suit  are  found  valid  and 
infringed,  such  a  decree  is  confined  to  that  part;  32°  and 
such  a  decree  is  not  entered  in  a  case  where  the  infringe- 
ment is  below  the  dignity  of  the  court,  but  bills  in  such 
cases  are  dismissed  without  costs.321  Judicial  destruction 
of  infringing  articles,  is  a  feature  of  the  patent  laws  of 
England,  but  is  not  justified  by  any  existing  law  of  the 
United  States;  though  that  severe  measure  has  been 
approved  in  two  obiter  dicta,322  and  unsuccessfully  invoked 
in  two  adjudicated  cases. 


323 


317  A.  R.  Mosler  &  Co.  v.  Lurie,  320Shute    v.    Morley    Co.,    64 
209   F.   R.   364,    1913;   Marconi  F.  R.  368,  1894. 

Wireless   Telegraph   Co.    v.   Na-  321  Wickwire  v.  Wire  Fabric  Co., 

tional  Electric  Signalling  Co.,  213  41  F.  R.  36,  1889. 

F.  R.  815,  1914;  Vacuum  Cleaner  322  Birdsell  v.  Shaliol,  112  U.  S. 

Co.   v.   Innovation  Electric  Co.,  487,  1884;  Underwood  Typewriter 

234  F.  R.  942,  1916.  Co.  v.  Elliot-Fisher  Co.,  156  F.  R. 

318  American    Caramel    Co.    v.  588,  1907. 
White,  234  F.  R.  328,  1915.  See  Section  573a. 

319  But  see  Section  636  of  this  323  American     Bell     Telephone 
book.  Co.  v.  Kitsell,  35  F.  R.  521,  1888; 


CHAP.    XX.]  ACTIONS   IN    EQUITY  719 

When  the  District  Court  finds  certain  of  the  claims  in- 
fringed, the  defendant  is  entitled  to  a  finding  on  the 
remaining  claims,  in  order  that  he  may  be  relieved 
from  the  payment  of  costs.324  An  interlocutory  decree 
which  as  to  damages  and  profits  in  form  follows  the 
language  of  Section  4921  of  the  Revised  Statutes  is  not 
improper.325 

§  644a.  An  appeal  from  an  interlocutory  decree  may 
in  certain  cases  be  taken  to  the  Circuit  Court  of  Appeals, 
for  the  circuit  in  which  that  decree  was  rendered,  at 
any  time  within  thirty  days  from  the  entry  of  the 
decree.326 

The  grounds  upon  which  an  appeal  from  an  interlocu- 
tory decree  could  be  taken  have  been  changed  from  time 
to  time  by  Federal  legislation.327  Prior  to  January  1, 
1912,  such  an  appeal  could  be  taken  only  from  an  inter- 
locutory decree  which  granted  or  continued  an  injunc- 
tion.328 By  the  act  of  March  3,  1911,  c.  231,329  however, 
the  jurisdiction  of  the  Circuit  Court  of  Appeals  to  review 
interlocutory  decrees  has  been  extended  to  those  refusing 
or  dissolving  or  refusing  to  dissolve  an  injunction,  thereby 
giving  a  plaintiff  who  has  been  refused  an  injunction  on 

American  Caramel  Co.  v.  Thomas  v.  Nassau  Electric  Railroad  Co., 

Mills  &  Bro.,  162  F.  R.  147,  1907.  112  F.  R.  676,  1901. 

324  National  Malleable  Co.  v.  327  For  a  review  of  the  various 
Symington  Co.,  234  F.  R.  343,  statutes  and  authorities  see  Ward 
1916.  Baking  Co.  v.  Weber  Bros.,  230 

325  Pedersen    v.    Dundon,    220  F.  R.  142,  1916. 

F.  R.  309,  1915.  328  See  cases  cited  under  note 

328  Judicial  Code,  Section  128;  326    and     Ex    Parle    National 

National  Automatic  Mach.  Co.  v.  Enamelling  Co.,  201  U.  S.   156, 

Automatic  Weighing  Mach.  Co.,  1906. 

105   F.   R.   670,    1901;   Western  329  Judicial  Code,   Section   129 

Electric  Co.   v.   Williams-Abbott  (Act  March  3,  1911,  c.  231,  36 

Electric  Co.,  108  F.  R.  953,  1901;  Stat.  1134),  in  effect  January  1, 

Thomson-Houston    Electric    Co.  1912. 


720  actions    in    EQUITY  [CHAP.    XX. 

any  or  all  of  his  claims  sued  upon,  a  right  of  review.330 
It  is  held  that  this  statute  permits  an  appeal  by  a  defend- 
ant from  an  order  refusing  to  dissolve  an  injunction  al- 
though the  application  for  the  order  of  dissolution  is 
merely  a  rehearing  of  the  application  for  the  injunction.331 
Sue]  i  an  appeal  will  secure  a  review  of  that  part  of  the  de- 
cree which  refers  to  an  injunction;33'-  and  to  that  end, 
the  Circuit  Court  of  Appeals  will  decide  the  questions  of 
validity  and  infringement,  and  whatever  other  questions 
underlie  the  question  of  the  justice  of  an  injunction.333  If 
the  decision  on  either  of  these  two  fundamental  questions 
is  adverse  to  the  complainant,  it  will  result  in  a  direction 
to  the  court  below,  to  dismiss  the  bill  of  complaint  from 
that  tribunal.334  On  such  an  appeal,  however,  the  find- 
ings of  the  court  below  on  questions  of  fact  have  great 
weight  and  unless  obviously  erroneous  they  will  be  per- 
mitted to  stand.335 

No  appeal  can  be  taken  by  a  defendant  from  an  inter- 
locutory decree  which  directs  an  accounting  of  profits 
and  damages,  but  does  not  order  an  injunction.  And 
where  an  interlocutory  decree  directs  an  accounting  of 
profits  and  damages,  and  orders  an  injunction  on  only 
part  of  the  claims  in  suit,  and  where  the  defendant  there- 

33°  Ward  Baking  Co.  v.  Weber  Co.  v.  Robbins,  64  F.  R.  397, 1894; 

Bros,     (reviewing    statutes    and  Kilmer  Mfg.  Co.  v.  Griswold,  67 

authorities),     230     F.     R.     142,  F.  R.  1017,  1895. 

1916.  334  Smith  v.  Vulcan  Iron  Works, 

331  American  Grain  Separator  165  U.  S.  525,  1897;  Millard  v. 
Co.  v.  Twin  City  Separator  Co.,  Chase,  108  F.  R.  404,  1901; 
202  F.  R.  202,  1912.  Sheffield  Car  Co.  v.  D'Arcy,  194 

332  Metallic  Extraction  Co.  v.  F.  R.  686,  1912;  Ex  Parte  Na- 
Brown,  104  F,  R.  354,  1900.  tional  Enamelling  Co.,  201  U.  S. 

333  Richmond    v.    Atwood,    52  156,  1906. 

F.  R.  28,  1892;  Consolidated  335  DeLavel  Separator  Co.,  v. 
Cable  Co.  v.  Pacific  Ry.  Co.,  58  Iowa  Dairy  Separator  Co.,  194 
F.  R.  226,  1893;  Columbus  Watch      F.  R.  423,  1912. 


CHAP.    XX.]  ACTIONS   IN    EQUITY  721 

upon  appeals,  the  court  will  not  consider  that  part  of  the 
decree  which  was  favorable  to  him.336  Nor  will  any  part 
of  the  decree  relating  to  an  accounting  be  considered.337 

§  645.  Equity  Rule  69  reads  as  follows: 

"Every  petition  for  rehearing  shall  contain  the  special 
matter  or  cause  on  which  such  rehearing  is  applied  for, 
shall  be  signed  by  counsel,  and  the  facts  therein  stated,  if 
not  apparent  on  the  record,  shall  be  verified  by  the  oath 
of  the  party  or  by  some  other  person.  No  rehearing  shall 
be  granted  after  the  term  at  which  the  final  decree  of  the 
court  shall  have  been  entered  and  recorded,  if  an  appeal 
lies  to  the  Circuit  Court  of  Appeals  or  the  Supreme  Court. 
But  if  no  appeal  lies,  the  petition  may  be  admitted  at  any 
time  before  the  end  of  the  next  term  of  the  court,  in  the 
discretion  of  the  court.338 

§  646.  A  rehearing  for  matter  apparent  on  the  face  of 
the  record  may  be  applied  for  by  a  petition  signed  by 
counsel,  and  stating  the  ground  upon  which  the  rehearing 
is  prayed.339  That  ground  must  be  sufficient  to  convince 
the  judge  that  the  decree  was  perhaps  erroneous.340  In 
order  to  do  that,  it  is  necessary  to  point  out  some  particu- 
lar misapprehension  of  the  law,  or  some  particular  mistake 
in  respect  of  the  evidence,  into  which  the  judge  was  unfor- 
tunate enough  to  fall.341  Such  a  misappprehension  may  be 
established  by  showing  that  since  the  case  sought  to  be 
reheard  was  decided,  the  appellate  court  has  settled  or 

336  Eagle    Lock    Co.    v.    Cor-  Boring  Co.  v.  Sheldon,  18  Blatch. 

bin    Lock   Co.,    64    F.   R.    789,  50,  1880. 
1894.  341  Everest  v.  Oil  Co.,  22  F.  R. 

337Lederer    v.    Garage    Equip-  252,  1884;  Railway  Mfg.  Co.  v. 

ment  Co.,  235  F.  R.  527,  1916.  Railroad  Co.,  26  F.  R.  411,  1886; 

338  Equity  Rule  69.  Coupe  v.  Weatherhead,  37  F.  R. 

339  Equity  Rule  69.  16,  1S88;  Detwiller  v.  Bosler,  58 

340  American     Diamond     Rock  F.  R.  250,  1893;  Beach  v.  Hobbs, 

82  F.  R.  928,  1897. 


722  ACTIONS   IN    EQUITY  [CHAP.    XX, 

clarified  the  law  so  as  to  give  it  a  different  character  from 
that  which  it  was  then  understood  to  have;842  bul  such  a 
mistake  cannot  be  established  by  showing  that  the  judge 
omitted,  in  his  opinion,  to  review  all  the  evidence  in  the 
case.343  It  is  useless  to  ask  for  a  rehearing  of  this  kind  on 
the  general  ground  that  the  decision  is  thought  by  counsel 
to  be  wrong.844  But  a  rehearing  may  be  spontaneously 
ordered  by  the  court,  when  the  judge  begins  to  doubt  his 
decision.345 

§  647.  A  rehearing  on  account  of  newly  discovered  evi- 
dence must  be  applied  for  as  soon  as  possible  after  its  dis- 
covery,346 by  a  petition  verified  by  the  oath  of  the  appli- 
cant or  of  some  other  person,347  and  stating  the  nature  of 
the  alleged  newly  discovered  evidence,  and  that  it  was  not 
known  to  the  petitioner  till  after  the  decree  was  rendered  ;348 
and  also  what  diligence  was  exercised  in  searching  there- 
for prior  to  that  time,349  and  praying  for  leave  to  file  a 
supplemental  bill  in  the  nature  of  a  bill  of  review,  and  for  a 
rehearing  of  the  cause  at  the  time  when  the  issues  raised 
by  that  bill  shall  be  ready  for  hearing.350  The  function 
of  such  a  bill  is  to  furnish  a  foundation  in  the  pleadings  for 
evidence  on  both  sides  of  the  new  issues  of  fact  to  deter- 
mine which  the  rehearing  is  granted. 

342  Wooster  v.  Handy,  21  F.  R.  Co.  v.  Cowles  Aluminum  Co.,  121 
51,  1884;  Spill  v.  Celluloid  Mfg.      F.  R.  557,  1903. 

Co.,  21  F.  R.  640,  1884;  Campbell          347  Equity  Rule  69. 

v.  New  York,  35  F.  R.  504,  1888.         348  Foote  v.  Stein,  35  F.  R.  205, 

343  Timken  v.  Olin,  37  F.  R.  207,      1888. 

1888.  349Allis  v.  Stowell,  5  Barm.  & 

344  Tufts  v.  Tufts,  3  Woodbury  Ard.  459,  1880;  New  York  Filter 
&  Minot,  429,  1847;  Gage  v.  Co.  v.  Filter  Co.,  62  F.  R.  582, 
Kellogg,  26  F.  R.  243,  1886.  1894. 

345  Brown  Mfg.  Co.  v.  Deere,  51  380  Dexter  v.  Arnold,  5  Mason, 
F.  R,  229,  1892.  310,    1829;    Daniell's    Chancery, 

348  Blandy  v.  Griffith,  6  Fisher,      Practice,  1537. 
435,  1873;  Pittsburgh  Reduction 


CHAP.    XX.]  ACTIONS   IN   EQUITY  723 

When  such  a  petition  is  filed,  it  must  be  supported  by 
affidavits  of  the  witnesses  who  are  expected  to  testify  to 
the  newly  discovered  facts  which  are  sought  to  be  brought 
into  the  case,351  and  also  by  affidavits  showing  that  those 
facts  were  not  discovered  by  the  petitioner  till  after  the 
former  hearing,352  and  could  not,  with  reasonable  dili- 
gence, have  been  discovered  sooner  than  they  were.353 
Such  a  petition  may  be  answered  by  counter  affidavits 
tending  to  show  that  part  or  all  of  the  statements  in  the 
petitioner's  affidavits  are  untrue.354  To  grant  the  prayer 
of  the  petition,  the  court  must  be  satisfied  that  the  appli- 
cant's affidavits  are  probably  true,355  and  clearly  mate- 
rial,356 and  that  the  facts  they  set  forth  were  not  known  to 
the  petitioner  at  the  time  of  the  former  hearing,  and  could 
not  with  reasonable  diligence  have  been  discovered  prior 
to  that  event;357  except  that  the  last  of  these  four  points 
is  not  required  to  be  shown,  where  it  is  shown  that  the 
other  party  knew,  at  the  time  of  the  decree,  of  the  facts 
which  are  sought  to  be  brought  into  the  case  on  a  rehear- 
ing.358 

Where  a  rehearing  is.  granted  to  permit  the  defendant 

351  Reeves  v.  Keystone  Bridge  F.  R.  72,  1882;  New  York  Sugar 
Co.,  2  Barm.  &  Ard.  259,  1876.        Co.  v.  Sugar  Co.,  35  F.  R.  217, 

352  Reeves  v.  Keystone  Bridge      1888. 

Co.,  2  Bann.  &  Ard.  256,  1876.  35«  Reeves  v.  Keystone  Bridge 

3*3  India  Rubber  Comb  Co.  v.  Co.,  2  Bann.  &  Ard.  259,  1876. 
Phelps,  4  Fisher,  317, 1870;  Hitch-          357  Prevost  v.  Gratz,  1  Peters' 

cock  v.  Tremaine,  9  Blatch.  551,  Circuit  Court  Reports,  364,  1816; 

1872;  Barker  v.  Stowe,  4  Bann.  &  Baker  v.  Whiting,  1  Story,  234, 

Ard.  405,  1878;  Willimantic  Linen  1810;  Reeves  v.  Keystone  Bridge 

Co.  v.  Clark  Thread  Co.,  24  F.  R,  Co.,  2  Bann.  &  Ard.  258,  1876; 

799,  1885;  Bennett  v.  Schooley,  77  Page  v.  Telegraph  Co.,  18  Blatch. 

F.  R.  352,  1896.  122,  1880. 

354  Blandy  v.  Griffith,  6  Fisher,  35S  Jonathan    Mills    Mfg.    Co. 

435,  1873.  v.    Whitehurst,    60    F.    R.    81, 

355Munson   v.    New  York,    11  1894. 


71*  I  ACTIONS    IN    BQT  LTS  [CHAP.    XX. 

to  introduce  newly  discovered  evidence,  after  an  account- 
ing has  been  carried  forward  in  pursuance  of  an  interlocu- 
tory decree;  the  order  will  properly  provide  that  the  de- 
fendant shall  pay  to  the  complainant  all  the  costs  which 
shall  have  been  incurred  by  the  latter,  in  connection  with 
that  account ing.:!:>9 

Rehearings  will  not  be  granted  to  enable  parties  to  search 
for  further  evidence; 360  nor  to  strengthen  their  expert 
testimony; 361  nor  to  amend  their  pleadings  so  as  to  make 
certain  evidence  admissible,  which  was  taken  before  the 
former  hearing,  and  was  disregarded  thereon,  because 
not  supported  by  any  pleading; 362  nor  to  produce  cumu- 
lative evidence  on  questions  of  fact  which  were  in  issue 
at  the  former  hearing; 363  nor  to  correct  errors  of  manage- 
ment committed  by  the  petitioner's  counsel.364  And  no 
appeal  lies  from  a  decision  of  a  District  Court  granting 
or  refusing  any  rehearing.365 

Where  a  rehearing  on  account  of  newly  discovered  evi- 
dence, is  wanted  by  either  party,  after  an  interlocutory 
decree  against  him  has  been  affirmed  by  the  Circuit  Court 
of  Appeals,  the  petition  for  that  rehearing  must  be  ad- 
dressed to  the  appellate  tribunal.  If  that  court  denies 
the  petition,  that  denial  is  final.    If  it  thinks  the  petition 

359  Pittsburgh  Reduction  Co.  v.  364Ruggles  v.  Eddy,  11  Blatch. 

Cowles  Aluminum  Co.,  121  F.  R.  524,  1874;  Colgate  v.  Telegraph 

557,  1903.  Co.,  19  F.  R.  828,  1884;  Pittsburg 

160  Munson   v.   New   York,    11  Reduction  Co.  v.  Aluminum  Co., 

F.  R.  72,  1882.  64  F.  R.  128,  1894;  Lowell  Mfg. 

'»  Hitchcock    v.    Tremaine,    5  Co.  v.  Hogg,  70  F.  R.  787,  1895; 

Fisher,  538,  1872.  Hanifen  v.  E.  H.  Godshalk  Co.,  78 

'«*  American     Saddle     Co.     v.  F.  R.  816, 1896. 

Hogg,  6  Fisher,  67,  1872.  See  Judicial  Code. 

3fl3  Blandy  v.  Griffith,  6  Fisher,  365  Roemer    v.    Bernheim,    132 

435,   1873;  Pfanschmidt  v.  Mer-  U.  S.  106,  1889. 
cantile  Co.,  32  F.  R.  667,  1887. 


CHAP.    XX. j  ACTIONS    IN    EQUITY  72."; 

should  be  granted,  the  Circuit  Court  of  Appeals  grants 
permission  to  the  petitioner  to  apply  to  the  court  below 
for  the  desired  rehearing;  and  that  court  will  then  pass 
upon  such  an  application  on  its  merits.366  Where  a  rehear- 
ing on  account  of  newly  discovered  evidence,  is  wanted  by 
either  party,  after  an  interlocutory  decree  against  him  has 
been  appealed  to  the  Circuit  Court  of  Appeals,  but  has 
not  been  heard  in  that  tribunal,  the  petition  for  that  re- 
hearing must  be  addressed  to  the  court  below,  and  must 
ask  that  court  to  request  the  Circuit  Court  of  Appeals 
to  return  the  record  to  the  lower  tribunal  for  further 
proceedings  therein.367 

§  648.  A  supplemental  bill  in  the  nature  of  a  bill  of 
review  should  state  the  newly  discovered  facts  upon  which 
it  is  based,  and  should  pray  that  the  cause  may  be  heard 
with  respect  to  the  new  matter,  at  the  same  time  that  it 
is  reheard  upon  the  original  bill,  and  that  the  party  who 
files  the  subordinate  bill  may  have  such  relief  as  the  nature 
of  his  case  requires.  The  proceedings  upon  a  bill  of  this 
description  are  the  same  as  those  upon  original  bills  in 
general.368  No  order  for  a  rehearing,  made  after  an  inter- 
locutory decree,  and  while  an  account  of  profits  and  dam- 
ages is  being  taken  by  a  master  in  chancery,  will  stop 
the  taking  of  that  account;  unless  the  court  enters  a 
special  order  directing  the  master  to  suspend  proceedings 
therein.369  And  where  a  rehearing  results  in  a  reversal  of 
an  interlocutory  decree,  which  has  been  entered  in  favor 

366  In  re  Gamewell  Fire- Alarm  v.  American  Unhairing  Mach. 
Tel.  Co.,  73  F.  R.  908,  1896;  Mu-  Co.,  99  F.  R.  1003,  1900;  Nut- 
nicipal  Signal  Co.  v.  Gamewell  ter  v.  Mossberg,  118  F.  R.  168, 
Fire-Alarm  Tel.   Co.,   77   F.   R.  1902. 

452,  1896;  Bliss  v.  Read,  106  F.  R.  368  Daniell's  Chancery  Practice, 

318,  1901.  1537. 

367  Roemer  v.  Simon,  91  U.  S.  389  Daniell's  Chancery  Practice, 
149,  1875;  Cimiotti  Unhairing  Co.  1467. 


726  ACTIONS    IN    BQTJITS  ICHAP.    XX. 

of  a  complainant,  and  results  also  in  a  dismissal  of  the 
complainant's  bill;  that  dismissal  will  be  without  prejudice 
to  the  use,  in  any  subsequent  accounting,  of  the  evidence 
which  may  have  been  taken  by  the  master.370  And  the 
decree  ordering  that  dismissal  will  give  costs  to  the  com- 
plainant for  the  litigation  prior  to  the  granting  of  the  re- 
hearing; and  will  give  costs  to  the  defendant  for  the 
litigation  which  occurred  after  that  event.371 

§  649.  A  final  decree  will  be  entered  in  favor  of  the  de- 
fendant, where  a  demurrer  to  the  whole  bill  is  sustained 
or,  since  the  Equity  Rules  in  effect  Feb.  1,  1913,  a  motion 
to  dismiss  is  granted,  on  a  point  which  is  not  cured  by 
amendment;  or  where  a  plea  to  the  whole  bill  or  its  present 
equivalent,  special  matter  in  the  answer,  is  found  to  be  true; 
or  where  either  of  the  numerous  defences  which  were  for- 
merly appropriate  only  for  an  answer,  and  which  apply  to 
the  whole  bill,  are  established  at  an  interlocutory  hear- 
ing.372 

Where  more  than  one  of  those  defences  is  strongly  sup- 
ported in  the  record,  it  is  proper  for  the  court  to  confine 
the  decision  to  any  one  of  them  that  is  judicially  found  to 
be  sound.  Where  the  defence  of  non-infringement  is  thus 
found,  it  is  proper 373  and  generally  preferable 374  to  select 
that  defence  as  the  one  upon  which  to  base  the  decision  for 
the  defendant.  The  reason  for  this  preference,  is  the  consid- 
eration that  the  question  of  the  validity  of  a  patent  ought 
not  to  be  adjudicated  in  the  affirmative,  in  a  case  where 
the  defendant,   by  reason  of  non-infringement  thereof, 

370  Campbell  v.  New  York,  35  373  McMichael  &  Wildman  Mfg. 
F.  R.  504,  1888.  Co.    v.    Ruth,    123    F.    R.    890, 

371  Hake  v.  Brown,  44  F.  R.  283,      1903. 

1890.  374  Wilcox     &     Gibbs     Sewing 

372  Richmond  v.  Atwood,  52  Mach.  Co.  v.  Sherborne,  123 
F.  R.  21,  1892.  F.  R.  877,  1903. 


CHAP.    XX.]  ACTIONS   IN   EQUITY  727 

has  no  adequate  motive  to  hunt  up  and  lay  before  the 
court,  all  the  facts  which  relate  to  that  question.  But 
where  a  record  does  contain  evidence  enough  to  establish 
the  invalidity  of  a  patent,  it  is  both  proper  and  expedient 
to  base  a  decision  for  the  defendant  on  that  ground,  even 
where  the  defence  of  non-infringement  is  also  established  by 
the  record;  because  the  public  has  a  right  to  be  judicially 
told  that  a  void  patent  is  void,  whenever  that  conclusion 
is  established  by  evidence  presented  in  a  litigated  case, 
in  one  of  the  courts  which  have  received  jurisdiction  to 
adjudicate  all  questions  of  validity  of  patents. 

Final  decrees  will  be  entered  in  favor  of  complainants, 
when  their  bills  have  successfully  run  the  gauntlet  of 
motions  to  dismiss,  answers,  interlocutory  hearings,  pe- 
titions for  rehearings,  supplemental  bills  in  the  nature  of 
bills  of  review,  accountings  before  a  master,  exceptions 
to  the  master's  report,  and  final  hearings,  through  which 
original  bills  in  patent  cases  may  regularly  be  caused  to 
pass.  The  last  three  parts  of  this  series  of  proceedings  are 
explained  in  the  chapter  on  profits,  and  the  others  have 
already  been  outlined  in  this. 

Where  an  action  in  equity  for  alleged  infringement  of  a 
patent,  is  settled  after  evidence  is  taken  therein,  and 
before  a  hearing  thereof;  that  settlement  cannot  include 
an  effective  stipulation  that  the  evidence  shall  be  with- 
drawn from  the  files  of  the  court.375  Parties  who  litigate 
such  controversies  in  United  States  courts,  must  litigate 
them  in  public,  and  are  not  permitted  to  use  those  tribu- 
nals for  secret  proceedings,  or  to  conceal  or  suppress  any 
of  the  records  of  their  litigations. 

Where  several  cases  on  one  patent  are  litigated  on  one 
set  of  depositions  and  other  evidence,  only  one  bill  of  costs 
is  taxed;  and  where  that  bill  is  taxed  against  the  complain- 

375  Sloan  Filter  Co.  v.  El  Paso  Reduction  Co.,  117  F.  R.  504,  1902. 


728  ACTIONS    IX    EQ1  [TY  [CHAP.    XX. 

ant,  a  decree  is  made  in  favor  of  each  defendant  for  an 
equal  share  of  the  amount.876 

Assuming  that  a  final  decree  has  already  been  entered 
for  the  complainant  or  the  defendant,  and  that  the  costs 
have  been  adjusted  and  taxed  according  to  law,377  it  is  now- 
convenient  to  delineate  the  further  proceedings  to  which 
the  defeated  party  may  resort.  These  are  of  two  kinds: 
bills  of  review,  and  appeals. 

§  650.  A  bill  of  review  is  the  proper  means  of  securing  a 
reconsideration  of  a  final  decree,  after  the  expiration  of  the 
term  at  which  it  was  entered.378  Such  bills  are  of  two 
sorts:  those  filed  to  correct  errors  apparent  on  the  face  of 
the  pleadings  or  decree; 379  and  those  filed  to  introduce 
evidence  of  facts  which  occurred  or  were  discovered  after 
the  decree  was  entered.380 

§  651.  A  bill  of  review  to  correct  errors  apparent  on  the 
pleadings  or  decree,  may  be  filed  without  leave  of  court,381 
but  no  such  bill  will  be  considered  or  acted  upon  by  the 
court,  unless  it  is  filed  within  the  same  time  after  the 
entry  of  the  decree,  as  that  provided  for  by  statute  relevant 
to  appeals; 382  which  latter  time  is  at  present  six  months.383 
Nor  will  such  a  bill  be  entertained,  if  the  decree  which  it 
was  filed  to  correct,  wTas  entered  by  the  lower  court,  after 

376  Taber  v.  Meriden  Britannia  379  Whiting  v.  The  Bank  of  the 
Co.,  106  F.  R.  85,  1901.  United  States,  13  Peters,  14, 1839. 

377  Sections  543  to  549  of  this  380  Story's  Equity  Pleading,  Sec- 
book;  Wooster  v.  Handy,  23  F.  R.  tion  404. 

49,   1885;  Spill  v.  Mfg.  Co.,  28  381  Ross  v.  Prentiss,  4  McLean, 

F.  R.  870,  1886;  Hill  v.  Smith,  32  106,  1846;  Story's  Equity  Plead- 

F.  R.  753,  1887;  Ryan  v.  Gould,  ing,  Section  405. 

32  F.  R.  754,   1887;  New  York  382  Thomas   v.   Harvie's  Heirs, 

Belting  Co.   v.   Rubber  Co.,   32  10  Wheaton,  149,  1825;  McDon- 

F.  R.  755,  1887.  aid  v.  Whitney,  39  F.    R.  467, 

378  Story's  Equity  Pleading,  Sec-  1889. 

tion  403.  383  26  Statutes  at  Large,  p.  826, 

Ch.  517,  Section  11. 


CHAP.    XX.]  ACTIONS  IN   EQUITY  72!) 

an  appeal  to  a  higher  court,  and  in  pursuance  of  directions 
contained  in  the  mandate  of  the  latter  tribunal.384  In 
considering  a  bill  of  review  of  this  sort,  the  court  will  con- 
fine its  examination  to  the  pleadings  and  decree  in  the 
original  action;  for  no  bill  lies  to  correct  any  errors  of  fact 
which  were  made  in  examining  or  weighing  the  evidence 
upon  which  the  decree  was  based.385 

§  652.  A  bill  of  review,  filed  to  introduce  evidence  of 
new  facts  or  of  newly  discovered  facts,  cannot  be  filed 
without  leave  of  court.386  Where  the  case  sought  to  be 
reviewed  has  been  appealed  to  the  Circuit  Court  of  Ap- 
peals, and  decided  there,  the  application  must  be  pre- 
sented to  that  tribunal.387  If  that  court  decides  that  the 
leave  ought  to  be  granted,  it  will  authorize  the  court  be- 
low to  receive  and  adjudicate  the  bill  of  review;  and 
thereafter  the  case  will  proceed  in  the  lower  tribunal, 
much  as  it  would  have  done  if  no  appeal  had  been  taken. 
After  the  bill  of  review  has  been  litigated  and  a  new  de- 
cree entered,  an  appeal  will  lie  to  the  Circuit  Court  of 
Appeals  on  the  whole  case.  The  mode  of  application  for 
leave  to  file  such  a  bill,  is  by  a  petition  stating  the  original 
proceedings  and  the  new  facts  or  newly  discovered  facts, 
on  the  strength  of  which  reversal  of  the  decree  is  prayed.388 
The  petition  must  be  supported  by  affidavits  stating  the 
exact  nature  of  those  facts,  in  order  that  the  court  may 
judge  of  their  materiality  and  sufficiency,  and  showing 
that  they  occurred  after  the  final  decree  was  entered,  or  if 

384  Southard  v.  Russell,  16  How-  387  In  re  Potts,  166  U.  S.  263, 

arcl,  570,  1853.  1897;  Kissinger-Ison  Co.  v.  Brad- 

™  Whiting    v.    Bank    of    the  ford  Belting  Co.,   123  F.  R.  92, 

United  States,  13  Peters,  14, 1839;  1903. 

Story's    Equity    Pleading,    Sec-  38S  Massie's      Heirs      v.      Gra- 

tion  407.  ham's  Adm'rs,   3    McLean,    43, 

388  Ross  v.  Prentiss,  4  McLean,  1842. 
106,  1846. 


730  ACTIONS    IN    EQUITY  [CHAP.    XX. 

they  occurred  before  that  time,  that  they  were  not  dis- 
covered, and  could  not  with  reasonable  diligence  have 
been  discovered  till  afterward.389  Petitions  of  this  sort 
may  be  filed  even  more  than  six  months  after  the  entry 
of  the  decree,  provided  they  are  filed  within  a  reasonable 
time  after  the  discovery  is  made,  upon  which  they  are 
based.390 

Leave  to  file  such  a  bill  will  be  granted,  in  a  proper  case, 
whether  those  facts  relate  to  issues  in  the  original  action, 
or  relate  to  defences  which  were  not  in  issue  therein; 391  but 
it  will  not  be  granted  where  the  facts  stated  in  the  petition 
are  not  adapted,  or  are  not  sufficient,  to  have  altered  the 
decree  if  they  had  been  before  the  court  on  the  hearing; 392 
nor  where  those  facts  could,  with  reasonable  diligence, 
have  been  discovered  before  the  decree  was  entered;393 
nor  to  enable  the  petitioner  to  introduce  evidence  to 
impeach  the  character  of  the  witnesses  upon  whose  testi- 
mony the  decree  was  based;  nor  to  introduce  cumulative 
testimony  on  a  point  litigated  and  decided  at  the  hearing ; 
but  newly  discovered  corroborating  evidence  in  writing, 
may  furnish  a  foundation  for  such  leave.394 

After  a  bill  of  review  to  introduce  new  facts,  or  newly 
discovered  facts,  has  been  duly  filed,  the  opposite  party 
may  answer  thereto,  and  thus  put  the  party  who  filed 

389  Story's  Equity  Pleading,  Sec-  392  Dexter  v.  Arnold,  5  Mason, 
tions  412,  413,  and  414.  313,  1829. 

390  United  States  v.  Samperyac,  393  Rubber  Go.  v.  Goodyear,  9 
Hemstead's  Circuit  Court  Re-  Wallace,  806,  1869;  Boston  & 
ports,  131,  1831.  Revere    Electric    Street-Rail  way 

391  Dexter  v.  Arnold,  5  Mason,  Co.  v.  Bemis  Car-Box  Co.,  98 
313,  1829;  United  States  v.  F.  R.  121,  1899;  Kissinger-Ison 
Samperyac,  Hemstead's  Circuit  Co.  v.  Bradford  Belting  Co.,  123 
Court  Reports,  131,  1831;  Story's  F.  R.  92,  1903. 

Equity  Pleading,  Sections  415  394  Southard  v.  Russell,  16  How- 
and  416.  ard,  569,  1853. 


CHAP.    XX. |  ACTIONS    IX    EQUITY  731 

it,  to  the  proof  of  its  allegations.895  A  motion  to  dismiss 
a  bill  of  this  sort  is  not  appropriate,  because  its  sufficiency 
in  point  of  law  must  be  passed  upon  before  it  can  be  filed. 

§  653.  A  bill  in  the  nature  of  a  bill  of  review,  differs 
from  a  bill  of  review  only  in  respect  of  the  legal  character 
of  the  complainant.  The  latter  bill  can  be  filed  by  either 
of  the  parties  to  the  decree  which  is  sought  to  be  reviewed, 
or  by  their  respective  privies  in  representation,  such  as 
heirs,  executors,  or  administrators;  but  the  former  is 
required  to  be  filed,  where  privies  in  estate,  such  as  dev- 
isees or  assignees  of  an  original  party,  seek  to  secure  the 
reversal  or  modification  of  a  final  decree  after  the  expira- 
tion of  the  term  at  which  it  was  entered.396  Neither  of 
these  sorts  of  bills  is  to  be  confounded  with  a  supple- 
mental bill  in  the  nature  of  a  bill  of  review.  That  is  still 
another  variety,  and  its  character  and  operation  have 
already  been  outlined.397 

§  654.  An  appeal  to  the  Supreme  Court  of  the  United 
States,  can  be  taken  by  a  complainant  whose  action  for 
an  infringement  of  a  patent,  has  been  dismissed  by  a 
District  Court,  on  the  ground  of  want  of  jurisdiction.398 
Where  a  motion  to  dismiss  an  action  on  that  ground  has 
been  denied  by  a  District  Court,  and  where  a  decree  has 
afterward  been  made  against  the  defendant  for  infringe- 
ment, the  defendant  has  a  right  to  have  the  question  of 
jurisdiction  reviewed  on  an  appeal,  and  also  has  a  right 
to  have  reviewed,  all  the  questions  which  were  decided 
against  him  in  the  decree  for  infringement.  It  has  been 
held  that  in  such  a  case  the  proper  practice  is  to  appeal 

395  Dexter  v.  Arnold,  5  Mason,  397  Sections  647  and  648  of  this 
309,  1829.  book. 

396  Story's  Equity  Pleading,  Sec-  398  Judicial  Code,  Section  238; 
tion  409.  L.  E.  Waterman  Co.  v.  Parker 

Pen  Co.,  107  F.  R.  141  1901. 


732  ACTIONS    |.\    EQUITY  [CHAP.    \.\. 

the  whole  case  to  the  Circuit  Court  of  Appeals,  and  then 
that  tribunal  will  certify  the  question  of  jurisdiction  to 
the  Supreme  Court,  and  will  wait  for  the  answer  to  that 
question,  before  hearing  the  appeal  from  the  decree  of 
infringement.399 

More  recent  authorities,  however,  hold  that  when  the 
lower  court  has  in  addition  to  the  question  of  jurisdic- 
tion decided  issues  of  general  law,  the  Circuit  Court  of 
Appeals  has  power  to  decide  all  questions  including  that 
of  jurisdiction,  if  the  assignments  of  error  are  addressed 
both  to  the  questions  of  general  law  and  that  of  jurisdic- 
tion.400 

An  appeal  may  be  taken  to  the  Supreme  Court  from 
a  decree  of  the  Court  of  Appeals  of  the  District  of  Co- 
lumbia wherein  is  drawn  in  question  the  validity  of  any 
act  of  the  Commissioner  done  under  the  authority  of  any 
statute  or  rule  of  the  Patent  Office — e.  g. — where  the 
Court  of  Appeals  has  passed  upon  the  act  of  the  officials 
of  the  Patent  Office  in  compelling  a  division  of  an  appli- 
cation under  Patent  Office  Rule  41.  The  rule  having  the 
force  of  a  statute,  whatever  action  is  taken  under  it  is 
taken  or  purports  to  be  taken  under  the  "  authority,  of 
the  United  States."  401  The  case  of  Frasch  v.  Moore,402 
however,  seems  to  hold  generally  that  no  appeal  lies  to  the 
Supreme  Court  from  a  decree  of  the  Court  of  Appeals 
of  the  District  of  Columbia  which  passes  on  a  decision  of 
the  Commissioner  requiring  division  of  an  application, 
since  such  a  decree  is  not  final  within  the  meaning  of 
Section  8  of  the  Act  of  Feb.  9,  1893,  c.  74,  27  Stat.  436. 

399  Sun  Printing  &  Publishing  101  Act  of  February  3,  1893,  Sec- 

Ass'n  v.  Edwards,  121  F.  R.  826,  tion  8;  Steinmetz  v.  Allen,   192 

1903.  U.  S.  543,  1904. 

100  Smith  v.  Farbenfabriken  of          402  Frasch  v.  Moore,  211  U.  S. 

Elberfeld  Co.,  203  F.  R.  476, 1913.  1,  1908.  See  Judic.  Code,  Sec.  250. 


CHAP.    XX.]  ACTIONS    I.\    EQUITY  733 

An  appeal  to  a  Circuit  Court  of  Appeals  i.s  demandable 
from  the  final  decree  of  any  United  States  District  Court, 
in  any  case  arising  under  the  patent  laws,  provided  it  is 
taken  within  six  months  after  the  entry  of  the  decree; 403 
unless  the  decree  involves  only  a  question  of  jurisdiction; 
or  is  only  for  costs.404  But  in  order  to  operate  as  a  super- 
sedeas, and  thus  stay  execution,  an  appeal  must  be  taken 
within  sixty  days  after  the  rendition  of  the  decree;  and 
indeed  an  execution  may  be  issued,  if  an  appeal  is  not 
taken  within  ten  days  after  such  rendition.405  But  in  the 
latter  case,  a  supersedeas  afterward  obtained  will  prevent 
further  proceedings  under  the  execution,  though  it  will 
not  interfere  with  what  has  already  been  done.406  The 
time  within  which  appeals  may  be  taken,  may  properly 
be  held  to  begin,  either  when  the  case  is  finally  decided, 
or  when  the  formal  decree  is  signed  by  the  judge,  and  filed 
with  the  clerk  of  the  court.407  When  an  appeal  operates 
as  a  supersedeas,  it  so  operates  only  as  against  the  money 
recovery  provided  for  in  the  decree,  and  not  as  against 
that  part  of  the  decree  which  directs  the  payment  of  the 
master's  fees,408  nor  as  against  that  part  which  directs  an 
injunction  to  issue;  409  but  the  judge  who  enters  a  decree 
granting  an  injunction,  has  discretionary  power  to  sus- 
pend, modify  or  restore  the  same  pending  an  appeal.410 

A  decision  of  a  United  States  District  Court,  not  to  dis- 
miss a  bill  for  infringement  of  a  patent,  upon  the  motion 

4U3  26  Statutes  at  Large,  p.  826,  v.    Gorman,     19    Wallace,     663, 

Ch.    517,    Sections    6    and    11;  1873. 

Judicial  Code,  Section  128.  407  Silsby  v.  Foote,  20  Howard, 

*»  DuBois  v.  Kirk,  158  U.  S.  290,  1857. 

67,  1895.  «»  Myers  v.  Dunbar,  1  Bann.  & 

405  Revised    Statutes,    Sections  Ard.  565,  1874. 

1012  and  1007.  409  Whitney  v.  Mowry,  3  Fisher, 

406  Board      of     Commissioners      175,  1867. 

410  Equity  Rule  74. 


Til  I  ACTIONS    IN    EQUITY  [CHAP.    XX. 

of  a  nominal  complainant,  against  the  opposition  of  those 
equitably  entitled  to  sue  in  the  name  of  the  nominal  com- 
plainant, is  immediately  appealable  to  the  Circuit  Court 
of  Appeals.411  But  a  decree  which  sustains  part  of  the 
claims  upon  which  a  bill  is  based,  while  dismissing  an- 
other part  of  those  claims  from  court,  is  not  appealable 
by  the  complainant  as  from  a  final  decree;  for  though  it  is 
final  in  respect  of  the  latter,  it  is  only  interlocutory  in 
respect  of  the  former,  and  the  right  of  the  complainant  to 
appeal  from  its  final  part,  is  suspended  until  after  an  ac- 
counting is  had  on  the  sustained  claim,  and  a  completely 
final  decree  is  made  to  dispose  of  the  entire  case.412 

An  interlocutory  decree  awarding  merely  an  accounting 
and  granting  no  injunction  for  the  reason  that  the  patent 
has  expired  is  not  appealable  to  the  Circuit  Court  of 
Appeals.  The  court  announcing  this  holding  states  that 
"it  is  idle  to  say  that  this  is  an  appeal  from  an  order  deny- 
ing an  injunction,  in  view  of  the  fact  that  it  is  conceded 
on  all  hands  that  the  patent  has  expired.'' 413 

The  prosecution  of  an  appeal  includes  the  procurement, 
from  the  clerk  of  the  District  Court,  of  a  transcript  of 
the  record  of  the  case  in  that  court,  or  of  such  parts  of 
that  record  as  the  parties  agree  to  be  sufficient  to  enable 
the  Circuit  Court  of  Appeals  to  decide  the  questions  in- 
volved in  the  appeal.  Such  an  agreement  must  be  made 
as  a  formal  stipulation,  and  be  filed  in  the  office  of  the 
clerk  of  the  District  Court;  and  when  it  is  thus  made  and 

411  Brush  Electric  Co.  v.  Electric  tional  Enamelling  Co.,  201  U.  S. 
Co.  of  San  Jose,  51  F.  R.  557,      156,   1906. 

1892.  Contra,  Chicago  Wooden  Ware 

412  Western  Electric  Co.  v.  Wil-  Co.  v.  Miller  Ladder  Co.,  133  F. 
liams-Abbott    Electric    Co.,    108      R.  541,  1904. 

F.  R.  953,  1901;  Library  Bureau  413  American  Sulphite  Pulp  Co. 

v.  Yawman  &  Erbe  Mfg.  Co.,  147  v.  Carthage  Sulphite  Pulp  Co., 
F.  R.  245,   1906;  Ex  Parte  Na-      224  F.  R.  501,  1915. 


CHAP.    XX.]  ACTIONS   IN   EQUITY  735 

filed,  the  clerk  will  prepare  a  transcript  of  the  specified 
parts  of  the  record  and  will  certify  it  accordingly.414 

An  appeal  to  the  Court  of  Appeals  of  the  District  of 
Columbia,  is  demandable  from  the  final  decree  of  the  Su- 
preme Court  of  the  District  of  Columbia,  in  any  case 
arising  under  the  patent  laws.415  And  the  law  stated  in 
this  section,  in  respect  of  appeals  from  a  United  States 
District  Court  to  a  United  States  Circuit  Court  of  Appeals, 
is  also  applicable  to  appeals  from  the  Supreme  Court  of 
the  District  of  Columbia  to  the  Court  of  Appeals  of  the 
District  of  Columbia;  except  in  a  few  particulars  of  differ- 
ence, due  to  differences  between  the  statutes  which  gave 
to  those  appellate  courts,  their  respective  beings  and 
jurisdictions.416 

§  655.  On  the  hearing  of  an  appeal  in  any  Circuit  Court 
of  Appeals,  the  decree  may  generally  be  attacked  by  the 
appellant,  upon  any  ground  upon  which  it  was  resisted  in 
the  court  below;  and  may  be  supported  by  the  appellee 
upon  any  ground  in  the  record,  whether  the  court  below 
based  its  decree  upon  that  ground  or  some  other.417  But 
the  decree  cannot  be  assailed  on  the  ground  that  the  court 
below  refused  to  set  aside  a  decree  pro  confesso,us  or 
refused  to  allow  the  appellant  to  retract  an  admission 
which  he  had  made  in  his  pleadings; 419  or  granted  or 
refused  a  rehearing;  42°  or  rendered  any  other  decision 

414  Lamb  Knit  Goods  Co.  v.  417  Electric  Gas  Lighting  Co.  v. 
Lamb  Glove  &  Mitten  Co.,  120     Fuller,  59  F.  R.  1003,  1894. 

F.    R.    273,    1902.     See   Equity  418  Dean  v.  Mason,  20  Howard, 

Rules  75,  76,  and  77.  198,  1857. 

415  31  Statutes,  Ch.  854,  sec.  226,  419  Jones  v.  Morehead,  1  Wal- 
p.  1225.  lace,  155,  1863. 

416  26  Statutes  at  Large,  p.  826,  420  Roemer  v.  Bernheim,  132 
Ch.  517;  27  Statutes  at  Large,  U.  S.  106,  1889;  Boesch  v.  Graff, 
p.  434,  Ch.  74;  31   Statutes  at  133  U.  S.  699,  1890. 

Large,  p.  660,  Ch.  803. 


736  A.CTIONS    IN    EQUITY  [CHAP.    XX. 

which  belonged  to  the  judicial  discretion  of  the  courl  to 
make.  Nor  can  a  decree  I"'  attacked  in  the  Circuit  Court 
of  Appeals,  on  accounl  of  any  error  made  by  a  master  in 

chancery  in  taking  an  account,  of  profits  or  damages, 
unless  that  error  was  brought  before  the  court  below  for 
correction,  by  means  of  a  proper  exception  to  the  master's 
report;  421  not  even  then,  where  the  alleged  error  is  one  of 
quantity  or  computation,  and  is  not  obvious.422  In  fact 
when  the  court  below  has  concurred  with  the  master  on 
his  findings  of  fact  the  findings  will  not  be  disturbed  by 
the  appellate  court  except  for  strong  reasons.423  Where  a 
decree  is  reversed  and  remanded  for  further  proceedings, 
and  a  second  decree  is  entered  by  the  court  below  after 
those  proceedings  are  taken,  and  an  appeal  is  taken  from 
the  second  decree,  that  decree  cannot  be  assailed  on  ac- 
count of  any  errors  that  occurred  prior  to  the  former 
decree.424  And  the  decision  of  the  Circuit  Court  of  Ap- 
peals on  the  first  appeal  is  not  reviewable  on  the  second 
appeal  to  that  tribunal.425  No  decree  can  be  attacked 
by  the  appellee,  on  the  appellant's  appeal.  Where  either 
party  to  a  decree  intends  to  ask  the  Circuit  Court  of 
Appeals  to  direct  it  to  be  altered,  he  must  appeal  to 
that  tribunal,  whether  the  other  party  appeals  or  not.4-" 
Where  both  parties  appeal,  both  appeals  are  heard  together 
in  the  Circuit  Court  of  Appeals,  and  the  complainant  in 
the  court  below  is  entitled  to  open  and  to  close  the  argu- 

421  Kinsman   v.   Parkhurst,    18  Wheaton,    431,    1825;   American 
Howard,  289,  1855.  Insurance  Co.  v.  Canter,  1  Peters, 

422  Warren  v.  Keep,  155  U.  S.  511,  1828;  Corning  v.  Troy  Iron 
267,  1894.  &  Nail  Factory,  15  Howard,  451, 

423  Emerson   &   Morris   Co.   v.  1853. 

Simpson  Bros.  Corporation,  214  425  Standard  Sewing  Mach.  Co. 

F.  R.  572,  1914.  v.  Leslie,  118  F.  R.  559,  1902. 

424  Himely  v.  Rose,  5  Cranch,  426  Corning  v.  Troy  Iron  &  Nail 
313,  1809;  The  Santa  Maria,  10  Factory,  15  Howard,  451,  1853. 


CHAP.    XX. J  ACTIONS    IN    EQUITY  737 

ment.  A  decree  may  also  be  attacked  by  an  appellant  on 
several  grounds  upon  which  it  may  not  have  been  resisted 
in  the  court  below.  Non-jurisdiction  of  equity  falls  in 
this  category,427  where  the  patent  expired  before  the  bill 
was  filed;  and  so  does  want  of  invention,  when  that  want 
results  from  facts  of  which  the  court  will  take  judicial 
notice.428  4 

Where  a  defendant  interposed  several  defences  in  the 
court  below,  and  where  that  court  held  one  of  them  to 
be  good,  and  therefore  dismissed  the  bill;  and  where  the 
Circuit  Court  of  Appeals  on  an  appeal,  finds  the  latter 
defence  to  be  bad,  it  will  thereupon  decide  whether  either 
of  the  others  are  good,429  and  if  it  finds  either  of  them  to 
be  so,  it  will  affirm  the  decree.430  Or  the  Circuit  Court 
of  Appeals  may  find  a  defence  to  be  good,  which  the  court 
below  did  not  so  find,  and  may  thereupon  omit  to  decide 
upon  the  defence  which  the  court  below  found  to  be  good.431 
And  a  decree  for  a  complainant  may  also  be  sustained  on 
a  different  ground  from  that  upon  which  it  was  based  in 
the  court  below.432  For  these  reasons,  assignments  of 
error  must  be  aimed  at  the  decree  of  the  court,  and  not 
at  the  reasons  which  were  stated  by  the  judge  for  making 
that  decree.433 

§  656.  After  the  Circuit  Court  of  Appeals  has  heard  an 
appeal,  it  may  affirm  the  decree,  or  may  reverse  it,  or  may 
modify  it,  or  may  remand  the  case  to  the  court  below  for 

127  Hipp  v.  Babin,  19  Howard,  431  Patent      Clothing      Co.    v. 

271,  1856.  Glover,  141  U.  S.  560,  1891. 

«8  Brown  v.  Piper,  91  U.  S.  41,  432  Woodward  v.  Boston  Last- 

1875.  ing    Mach.    Co.,  63   F.   R.   609, 

429  Crown  Corlc&  Seal  Co.  v.  1894. 

Aluminum  Stopper  Co.,  108  F.  R  433  Clark  v.   Deere  &   Mansur 

848,  1901.  Co.,  80  F.  R.  534,  1897;  Evans  v. 

«°  Corning  v.  Troy  Iron  &  Nail  Suess  Glass  Co.,  83  F.  R.  706, 

factory,  15  Howard,  451,  1853.  1897. 


8 


738  ACTIONS    IN    EQUITY  [CHAP.    XX. 

further  proceedings.484  Such  further  proceedings  may 
involve  the  taking  of  further  testimony  before  the  master 
on  the  question  of  damages  and  profits,  and  in  such  a  case 
the  defendant  may  introduce  evidence  to  show  that  the 
witnesses  on  the  former  hearing  made  mistakes  as  to  the 
number  of  infringements.435  Where  the  Court  of  Appeal 
affirms  the  decree,  with  respect  of  the  merits,  it  will 
affirm  it  also  in  respect  of  the  costs; 436  except  where  the 
absence  of  a  needed  disclaimer  necessitates  that  costs 
shall  not  be  recovered  though  the  decree  is  otherwise 
affirmed.437  Where  it  reverses  the  decree,  it  generally  does 
so  at  the  appellee's  costs,  so  that  the  court  below  will  have 
nothing  to  do  but  to  tax  those  costs,  and  enter  a  decree 
therefor;  and  from  such  a  decree  there  is  no  appeal.438 
If,  however,  the  appellate  court  does  not  pass  on  the  ques- 
tion of  costs  in  the  court  below,  the  court  below  in  entering 
a  decree  on  the  mandate  will  not  ordinarily  change  its 
prior  decree  as  to  costs,  at  least  in  a  case  where  the  plain- 
tiff has  obtained  a  decree  for  damages  which  was  reversed 
by  the  appellate  court  on  the  ground  that  plaintiff  has 
failed  to  make  a  proper  separation  of  damages  and  where 
nevertheless  the  plaintiff  did  suffer  damage.439  When 
the  appellate  court  modifies  the  decree,  it  may  do  so  in 
either  of  several  respects.    For  example,  it  may  change 

434  Revised    Statutes,    Section      ard,    121,    1853;    Novelty   Glass 
701.  Mfg.  Co.  v.  Brookfield,  172  F.  R. 

435  Westinghouse  Electric  Mfg.      221,  1909. 

Co.  v.  Wagner  Electric  Mfg.  Co.,         Contra,   Kahn  v.  Starrels,   136 

218  F.  R.  646,  1914.  F.  R.  597,  1905;  Johnson  v.  Foos 

«« Du  Bois  v.  Kirk,  158  U.  S.  Mfg.  Co.,  141  F.  R.  73,  1905. 
58,    1895;    SprouU    v.    Pratt    &          438  Elastic  Fabrics  Co.  v.  Smith, 

Whitney    Co.,    108    F.    R.   965,  100  U.  S.  Ill,  1879. 
1901.  439  Westinghouse  Air-Brake  Co. 

437  Revised    Statutes,     Section  v.  New  York  Air-Brake  Co.,  140 

4922;  O'Reilly  v.  Morse,  15  How-  F.  R.  144,  1905. 


CHAP.    XX.]  ACTIONS    IN    EQUITY  739 

the  amount  of  the  decree,  instead  of  remanding  the  case 
to  the  court  below  for  a  recomputation.  ,4°  Where  it 
remands  a  case  for  further  proceedings,  those  proceedings 
are  guided  by  the  court  below,  as  if  it  had  originally  ren- 
dered the  decision,  which  was  made  by  the  appellate  tri- 
bunal.441 Where  both  parties  appeal  from  the  decree,  and 
the  decree  is  affirmed,  no  costs  incurred  in  the  Circuit 
Courts  of  Appeals,  are  allowed  to  either  party.442 

§  657.  A  certificate  of  division  of  opinion  is  a  means  of 
taking  a  question  of  law  to  the  Circuit  Court  of  Appeals, 
where  that  question  arises  in  a  case  heard  by  two  judges 
in  the  court  below,  and  where  those  judges  disagree  about 
its  proper  solution.443  No  question  of  infringement  or 
other  question  of  fact  can  be  taken  to  the  Circuit  Court 
of  Appeals  in  this  method; 444  and  such  a  certificate  must 
state  the  precise  points  of  law  which  are  involved,  or  the 
case  will  be  remanded  without  an  answer.445 

§  657a.  No  appeal  may  be  taken,  to  the  Supreme  Court 
from  a  final  decree  of  the  Court  of  Appeals  of  the  Dis- 
trict of  Columbia,  which  merely  adjudges  the  validity  or 
invalidity  of  a  patent  although  the  decree  may  in  a 
proper  case  be  reviewed  by  certiorari  or  certified  ques- 
tions.446 And  no  appeal  lies  from  any  Circuit  Court  of 
Appeals  to  the  Supreme  Court  in  any  patent  case,447  ex- 

44U  Parks  v.  Booth,   102  U.  S.  443  26  Statutes  at  Large,  p.  826, 

106,   1880;  Tuttle  v.  Claflin,  76  Ch.  517,  Section  11. 

F.  R.  237,  1896;  Wales  v.  Water-  444  California    Paving    Co.    v. 

bury  Mfg.  Co.,   101  F.  R.   130,  Molitor,  113  U.  S.  616,  1884. 

1900.  «5  Wilson  v.  Barnum,  8  How- 

441  In  re  Chicago  Sugar-Refining  ard,  258,  1850. 

Co.,  87  F.  R,  750,  1898.  446  Judicial  Code,  Sections  250, 

442  Edison  Electric  Light  Co.  v.      251. 

Electric  Supply  Co.,  66  F.  R.  312,  447  Judicial  Code,  Section  128, 

1895.  as  amended  by  Act  of  January  28, 

1915. 


<  10  ACTIONS    in    EQUITY  [CHAP.    XX. 

cept  actions  brought  by  the  United  States  to  repeal 
patents.448 

Any  Circuit  Court  of  Appeals  may  certify  to  the  Su- 
preme Court  any  pure  question  of  law  upon  which  it  de- 
sires the  instruction  of  that  court  for  its  proper  decision. ' M 
Where  a  Circuit  Court  of  Appeals  sends  such  a  certificate 
to  the  Supreme  Court,  that  certificate  must  clearly  and 
distinctly  state  whatever  question  of  law  is  involved 
therein,  and  must  show  that  the  Circuit  Court  of  Appeals 
desires  to  receive  instruction  from  the  Supreme  Court 
how  to  decide  that  question.450 

The  Supreme  Court  may  send  a  writ  of  certiorari,  to 
any  Circuit  Court  of  Appeals,  requiring  any  action  in 
equity  for  infringement  of  a  patent  to  be  sent  from  the 
latter  tribunal  to  the  Supreme  Court,  for  its  review  and 
determination,  with  the  same  power  and  authority  as  if 
the  case  had  been  carried  by  an  appeal  to  the  Supreme 
Court.451  This  power  may  be  exercised  before  or  after 
any  decision  of  the  Circuit  Court  of  Appeals,  and  irre- 
spective of  any  such  decision,  and  at  any  time  during  the 
pendency  of  the  case  in  that  tribunal.452  But  this  power 
is  exercised  by  the  Supreme  Court,  only  in  cases  of  great 
importance;  or  in  cases  of  conflict  between  two  or  more 
Circuit  Courts  of  Appeals,  or  between  such  a  court  and  a 
State  court ;  or  in  cases  which  affect  some  interest  of  this  na- 
tion.453 And  it  is  only  when  the  lower  courts  are  distinctly 
wrong  that  they  will  be  reversed  on  questions  of  fact.451 

448  United  States  v.  Bell  Tel-  Robbins,  148  U.  S.  267,  1893; 
ephone    Co.,     159    U.     8.    548,      Supreme  Court  Rule  37. 

1895.  451  Judicial  Code,  Section  240. 

449  Graver  v.  Faurot,  162  «*  The  Three  Friends,  166  U.  S. 
U.  S.  435,  1896;  Cross  v.  Evans,      1,  1897. 

167  U.  S.  60,  1897;  Judicial  Code,  453  Forsyth  v.   Hammond,    166 

Section  239.  U.  S.  514,  1897. 

450  Columbus     Watch     Co.     v.  454  Draper  v.  Am.  Loom  Co.,  169 


CHAP.    XX. j  ACTIONS    IN    EQUITY  741 

§  6576.  When,  in  a  suit  on  several  patents  the  complain- 
ant succeeds  on  some  and  is  defeated  as  to  others,  costs  are 
in  the  discretion  of  the  court  and  are  awarded  according 
to  the  circumstances  of  the  particular  case.  Likewise 
when  the  bill  charges  infringement  by  a  number  of  devices 
and  only  one  is  proven  to  infringe.455  When  an  injunction 
is  denied  only  because  the  patent  has  expired  pendente 
lite  the  plaintiff  is  also  entitled  to  costs.456 

F.    R.    298,    1909;    Continental  Co.  ».  Yost  Electric  Mfg.  Co.,  189 

Paper  Bag  Co.  v.  Eastern  Paper  F.  R.  625,  1911. 
Bag  Co.,  210  U.  S.  405,  1908.  45fl  American    Caramel    Co.    v. 

455  Perkins  Electric  Switch  Mfg.  White,  234  F.  R.  328,  1916. 


CHAPTER  XXI 


INJUNCTIONS 


G58.  Jurisdiction  to  grant  injunc- 
tions. 
658a.  Form  of  injunctions. 
669.  Preliminary  injunctions. 

060.  Bills  for  preliminary  injunc- 

tions. 

061.  Notices  of  motions  for  pre- 

liminary injunctions. 

662.  Motions  for  preliminary  in- 

junctions. 

663.  Suspensions  of  motions  for 

preliminary  injunctions. 

664.  Temporary  restraining 

orders. 

665.  Elements    of    prima    facie 

rights  to  preliminary  in- 
junctions. 

666.  Prior  adjudication. 

667.  Public  acquiescence. 

668.  Duration  of  public  acquies- 

cence in  a  strict  monopoly. 

669.  Duration  of  public  acquies- 

cence in  a  licensed  monop- 
oly. 

670.  Public  acquiescence  need  not 

be  universal  to  be  effica- 
cious. 

671.  Decrees  pro  confesso. 

672.  Consent  decrees. 

673.  Defendant's     admission    of 

validity. 

674.  Interference  decision. 

675.  The  complainant's  title. 

676.  Infringements. 

742 


677.  Defences     to    motions    for 

preliminary     injunctions; 

and  first  by  way  of 
traverse. 

678.  Defences    by   way   of    con- 

fession and  avoidance. 

679.  Averting  effect  of  prior  ad- 

judication. 

680.  Averting  effect  of  public  ac- 

quiescence. 

081.  Averting  preliminary  injunc- 

tion by  proving  repeal  or 
expiration  of  patent,  or 
fault  in  title  thereto. 

082.  Averting  preliminary  injunc- 

tion by  proving  license. 

083.  By  proving  estoppel. 

084.  By  showing  laches. 

085.  Preliminary  injunction  must 

generally  follow  a  cause 
and  an  application  there- 
for. 
080.  Bonds  instead  of  injunctions, 
where  complainant  grants 
licenses. 

087.  Where  infringing  machinery 

embodies  non-infringing 
features,  also  in  some  other 
cases. 

088.  Bonds  required  from  com- 

plainants in  certain  cases. 

089.  Injunctions  not  averted  by 

the  existence  of  a  remed- 
at  law. 


CHAP.    XXI.] 


INJUNCTIONS 


7i:j 


690.  Injunctions  pro  confesso  on 

withdrawal  of  opposition 
to  a  motion  for  an  injunc- 
tion. 

691.  Discretion  of  the  court  in 

granting  or  refusing  in- 
junctions. 

Motions  to  dissolve  prelim- 
inary injunctions. 

Motions  to  dissolve  for  errors 
in  point  of  law. 

Motions  to  dissolve  on  ac- 
count of  newly  discovered 
evidence. 

Reinstatement  of  dissolved 
injunctions. 

Consequences  of  obedience 
or  disobedience  to  injunc- 
tions which  are  subse- 
quently dissolved. 
Appeals  from  preliminary 
injunctions. 

Permanent  injunctions. 

Refusal  of  permanent  in- 
junction, because  the  pat- 
ent has  expired. 

Because  the  complainant  has 
assigned  the  patent. 


692. 


693. 


694. 


695 


696 


696a. 

697 
698 


699 


700.  Because    the    defendant    is 

dead,  or,  if  a  corporation, 
is  dissolved. 

701.  Cessation  of  infringement  no 

ground  for  refusal  to  en- 
join. 
701a.  Not  refused  because  of  non- 
use  of  the  patent. 

702.  Postponement  of  permanent 

injunctions. 

703.  Suspension     of     permanent 

injunctions  pending  ap- 
peals therefrom. 

704.  Dissolution    of    permanent 

injunctions. 

705.  Injunctions    granted    inde- 

pendent of  other  relief, 
and  against  complainants 
in  certain  cases. 

706.  The  duration  of  injunctions 

generally  limited  by  the 
term  of  the  patent. 

707.  Territorial  scope  of  injunc- 

tions. 

708.  Attachments  for  contempt. 

709.  Improper   defences   to   mo- 

tions for  attachments. 

710.  Penalties   for   violations   of 

injunctions. 


§  658.  Jurisdiction  to  grant  injunctions  to  prevent  the 
violation  of  patent  rights,  is  conferred  by  statute  upon  the 
same  courts  that  are  vested  with  common-law  jurisdiction 
in  patent  cases.1  The  statute  provides  that  the  juris- 
diction shall  be  exercised  according  to  the  course  and 
principles  of  courts  of  equity,  and  upon  such  terms  as  the 
court  may  deem  reasonable.  This  twofold  provision 
indicates  the  sources  from  which  the  existing  rules  ap- 
1  Revised  Statutes,  Section  4921. 


,  I  I  INJUNCTIONS  [CHAP.    XXI. 

plicable  to  such  cases  were  drawn.  They  were  drawn 
from  the  ordinary  course  and  principles  of  courts  of  equity, 
and  from  a  reasonable  contemplation  of  the  peculiar 
circumstances  which  attend  patent  rights  and  patent 
litigation.  Sonic  of  those  rules  relate  only  to  preliminary 
injunctions,  and  others  relate  to  permanent  injunctions 
alone;  and  the  residue  are  equally  applicable'  to  both. 
It  is  the  plan  of  this  chapter  to  explain  those  three  classes 
of  rules,  and  to  show  how  all  of  them  combined  make  up  a 
system  which  may  guide  the  judicial  discretion  in  nearly 
every  variety  of  circumstances. 

§  658a.  Whether  or  not  an  injunction  that  merely  en- 
joins the  defendant,  for  instance,  from  "making,  using 
or  selling  devices  embodying  the  constructions  set  forth, 
and  claimed  in  the  patent  in  suit"  was  ever  sufficient  in 
form,  it  probably  ceased  to  be  so  on  October  15,  1914, 
when  the  so-called  Clayton  law  went  into  effect.2  By 
Section  19  of  that  Act  it  is  provided  that: 

"That  every  order  of  injunction  or  restraining  order 
shall  set  forth  the  reasons  for  the  issuance  of  the  same, 
shall  be  specific  in  terms,  and  shall  describe  in  reasonable 
detail,  and  not  by  reference  to  the  bill  of  complaint  or 
other  document,  the  act  or  acts  sought  to  be  restrained, 
and  shall  be  binding  only  upon  the  parties  to  the  suit, 
their  officers,  agents,  servants,  employees  and  attorneys, 
or  those  in  active  concert  or  participating  with  them, 
and  who  shall,  by  personal  service,  or  otherwise,  have  re- 
ceived actual  notice  of  the  same." 

§  659.  A  preliminary  injunction  is  one  which  is  granted 
after  the  filing  of  the  bill,  and  before  the  case  is  ready  to  be 
decided  in  respect  of  its  prayer  for  a  permanent  injunction, 

2  Federal  Anti-Trust  Act  in  ef-  See  Lion  Tractor  Co.  v.  Bull 
feet  October  15,  1914,  Chap.  323,  Tractor  Co.,  231  F.  R.  156, 
Section  19,  38  Statutes,  page  730.      1916. 


CHAP.    XXI.]  INJUNCTIONS  745 

or  in  respect  of  its  prayer  for  profits  or  for  damages.  Where 
a  preliminary  injunction  is  granted,  it  is  usually  applied 
for  before  the  filing  of  the  answer;  but  it  is  often  issued 
after  that  stage  of  the  case;  and  sometimes  even  after  the 
complainant  has  introduced  all  his  prima  facie  evidence,3 
and  even  after  all  the  evidence  has  been  taken,  and  an 
interlocutory  hearing  has  been  had  upon  the  record  of 
that  evidence. ' 

Such  an  injunction  may  be  dissolved  at  any  time;  and  a 
motion  to  dissolve  it  may  be  made  whenever  an  apparent 
cause  for  its  dissolution  becomes  known  to  the  party 
enjoined.  If  not  sooner  terminated  by  dissolution,  or  by  a 
certain  statutory  limitation  hereafter  explained,  such  an 
injunction  continues  till  the  interlocutory  decree;  and  then 
it  is  dissolved  or  is  made  permanent,  according  to  the 
equities  of  the  case  as  they  appear  at  that  time. 

§  660.  As  the  practice  was  prior  to  the  promulgation  of 
the  Equity  Rules  now  in  force,  it  was  required  that  a 
bill  of  complaint,  in  order  to  lay  the  foundation  for  a  pre- 
liminary injunction,  should  state  the  prior  adjudication 
or  acquiescence  upon  which  the  presumption  of  validity 
of  the  patent  is  based.5  It  is  surmised,  however,  that 
since  the  promulgation  of  the  present  Equity  Rules 
whereby  a  bill  of  complaint  becomes  merely  a  statement 
of  ultimate  facts  to  be  proved  and  charges  of  evidence  are 
eliminated  therefrom,  that  it  would  not  only  not  be  re- 
quired that  a  bill  of  complaint  set  forth  such  adjudication 
or  acquiescence  but  that  such  allegations  in  a  bill  of  com- 
plaint would  be  improper  and  should  appear  only  in  the 

3  Union     Paper-Bag     Machine      American  Fur  Refining  Co.,   117 
Co.   v.    Newell,    11    Blatch.   550,      F.  R.  623,  1902. 
1874.  5  Parker  v.  Brant,  1  Fisher,  59, 

*Cimiotti     Unhairing    Co.     v.      1850;  Wirt  v.  Hicks,  46  F.  R.  71, 

1891. 


746  INJUNCTIONS  [chap.   XXI. 

affidavits  accompanying  the  motion.  Such  allegations 
are  merely  statements  of  evidence  and  pertinent  only  on 
a  motion  for  preliminary  injunction  and  even  then  only 
in  so  far  as  they  indicate  probable  eventual  success  on  the 
part  of  the  plaintiff.  They  are  not  ultimate  facts  which 
form  the  basis  of  the  plaintiff's  case.  While  it  is  true  that 
Equity  Rule  25  requires  that  the  bill  shall  include  "a 
statement  of"  any  special  relief  pending  the  suit,  it  is 
surmised  that  this  would  require  a  statement  only  of  the 
ultimate  facts  which  would  entitle  the  plaintiff  to  relief 
pendente  lite,  as,  for  example,  a  statement  of  facts  which 
would  show  that  the  plaintiff  would  be  liable  to  irremedi- 
able injury  if  relief  were  not  granted  pending  the  suit.  The 
bill  must  contain  a  specific  prayer  for  an  injunction  pending 
the  suit,6  and  must  conform  to  those  requisites  of  bills  in 
equity  which  are  set  forth  in  the  20th  chapter  of  this  book. 
§  661.  Due  notice  of  a  motion  for  a  preliminary  in- 
junction must  be  served  on  the  party  sought  to  be  en- 
joined from  infringing  a  patent,  before  that  motion  will 
be  heard  by  the  court.  This  rule  formerly  had  a  sufficient 
foundation  in  a  statute  of  1793,  which  provided  that  no 
writ  of  injunction  should  be  granted  in  any  case  without 
reasonable  previous  notice  to  the  adverse  party,  or  his 
attorney,  of  the  time  and  place  of  moving  for  the  same.7 
Portions  of  the  section  which  contained  that  provision 
are  embraced  in  the  Revised  Statutes,8  but  that  provision 
was  omitted  from  those  statutes,  and  was  thereby  re- 
pealed.9 But,  by  the  Federal  " Anti-Trust"  Act  of  1914, 
known   as  the  Clayton  Act,9°  the  requirement  was  re- 

6  Equity  Rule  25.  9  Revised      Statutes,      Section 

7  1  Statutes  at  Large,  Ch.  22,      5596. 

Section  5,  p.  334.  *  Act  of  Oct.  15,  1914,  Chap. 

8  Revised  Statutes,  Sections  716     323,  Section  17,  38  Stat.  730. 
and  720. 


CHAP.    XXI.]  INJUNCTIONS  747 

stored  not  only  as  to  preliminary  injunctions  but  as  to 
restraining  orders,  unless  it  appear  that  immediate  and 
irreparable  damage  will  ensue  if  the  restraining  order  is  not 
granted  immediately. 

The  Revised  Statutes  provide  that  the  Supreme  Court 
shall  have  power  to  prescribe  from  time  to  time,  and  in  any 
manner  not  inconsistent  with  any  law  of  the  United 
States,  the  modes  of  proceeding  to  obtain  relief  in  suits  in 
equity  in  the  Circuit  and  District  Courts.10  In  pursuance 
of  this  authority,  the  Supreme  Court  has  prescribed  an 
elaborate  code  of  rules  of  practice  for  the  courts  of  equity 
of  the  United  States.  Rule  73  of  that  series  provides  that 
preliminary  injunctions  sh?ll  be  grantable  only  upon  due 
notice  to  the  other  party.  And  there  is  a  similar  provision 
as  to  restraining  orders  unless  immediate  and  irreparable 
loss  or  damage  would  ensue  before  the  matter  could  be 
heard  on  notice.11  Formerly  notice  was  required  only  in 
the  case  of  "special"  injunctions.12  The  requirements  of 
the  statute  are  therefore  substantially  the  same  as  those 
of  the  Equity  Rules. 

§  662.  A  motion  for  a  preliminary  injunction  is  heard  on 
ex  parte  affidavits.13  The  complainant's  affidavits  in  chief 
must  show  all  the  facts  which  are  necessary  to  prima  facie 
entitle  him  to  such  an  injunction.14  The  defendant's 
affidavits  must  state  all  the  facts  upon  which  he  bases 
his  defence  to  the  motion,  and  if  those  statements  are  by 
way  of  traverse,  no  further  affidavits  are  admitted  on  the 
hearing;  but  if  they  are  by  way  of  confession  and  avoid- 
ance, the  complainant  is  permitted  to  read  affidavits  in 

10  Revised  Statutes,  Section  13  Grover  &  Baker  Sewing  Ma- 
917;  Orr  v.  Littlefield,  1  Woodbury  chine  Co.  v.  Williams,  2  Fisher, 
&  Minot,  19,  1845.  133,  1860. 

11  Equity  Rule  73.  14  Union    Paper-Bag    Machine 

12  Former  Equity  Rule  55.  Co.  v.  Binney,  5  Fisher,  167,  1871. 


748  INJUNCTIONS  [chap.    XXI. 

reply,  but  to  that  reply  no  rejoinder  from  the  defendant 
is  ever  allowed.1'' 

The  complainant's  bill,  if  sworn  to,  may  be  used  as  an 
affidavit;  16  and  so  also  may  the  defendant's  answer,  if 
it  is  on  file  when  the  motion  for  a  preliminary  injunction 
is  heard. "  But  answers  are  commonly  and  properly  drawn 
in  such  general  terms,  that  they  are  of  minor  importance 
as  defences  to  such  motions,  even  where  they  are  well 
concerted  as  pleadings.  For  example,  where  the  answer 
says,  on  the  question  of  infringement,  that  the  defendant 
never  made,  used  or  sold  any  specimen  of  the  patented 
thing  and  where  the  affidavits  of  the  complainant  contain 
a  description  of  what  the  defendant  has  done,  and  contain 
proper  expert  testimony  showing  that  those  doings  con- 
stitute infringement  of  the  patent,  the  general  denial 
of  the  answer  will  go  for  naught,  on  the  hearing  of  a  pre- 
liminary injunction.18  The  statements  of  the  complain- 
ant's affidavits  in  chief  are  taken  on  the  hearing  to  be  true, 
so  far  as  they  are  uncontradicted  by  the  affidavits  of  the 
defendant; 19  and  the  affidavits  of  the  defendant  are  taken 
to  be  true,  so  far  as  they  are  consistent  with  the  com- 
plainant's affidavits  in  chief,  and  are  not  contradicted  by 
his  affidavits  in  reply.20 

All  affidavits  to  be  used  to  support,  or  to  oppose,  a 
motion  for  a  preliminary  injunction  ought  to  be  served 
on  the  opposite  counsel  a  reasonable  time  before  the 
motion  is  argued.  Where  that  is  not  done,  the  court  may 
reject  the  affidavits,  or,  at  its  discretion,  may  allow  them 

15  Day  v.  Car-Spring  Co.,  3  18  Ely  v.  Mfg.  Co.,  4  Fisher,  64, 
Blatch.     154,    1854;    Rogers    v.      1860. 

Abbot,  4  Washington,  514,  1825.  19  Wells  v.  Gill,  6  Fisher,  89, 

16  Young  v.  Lippman,  9  Blatch.      1872. 

277,  1872.  20  Cooper      v.      Mattheys,      3 

17  Parker  v.  Brant,  1  Fisher,  58,  Perm.  Law  Journal  Reports, 
1850.  40,  1842. 


(HAP.    XXI.]  INJUNCTIONS  749 

to  be  read,  giving  the  opposite  party  the  option  to  proceed 
with  the  hearing,  or  to  take  time  to  examine  the  affidavits, 
and  where  they  admit  of  reply,  to  take  other  affidavits 
for  that  purpose.21 

§  663.  Where,  on  the  hearing  of  a  motion  for  a  prelimi- 
nary injunction,  the  complainant's  moving  papers  are 
found  to  lack  a  necessary  point  which  is  presumably  ca- 
pable of  being  supplied,  the  court  may  suspend  the  motion 
to  enable  the  complainant  to  supply  it.22  And  the  com- 
plainant may  withdraw  his  motion  at  any  time  before  it 
would  otherwise  be  decided;  even  where  the  defendant 
objects  to  that  withdrawal,  and  the  complainant  does  not 
permanently  relinquish  his  contention.23 

If,  when  the  recently  repealed  equity  rules  were  in  force, 
a  demurrer  was  on  file  in  the  case  when  a  motion  for  a  pre- 
liminary injunction  came  on  to  be  heard,  the  demurrer 
was  first  heard  and  disposed  of,  even  though  that  proceed- 
ing necessitated  a  postponement  of  the  hearing  of  the 
motion.  But  if  the  demurrer  was  overruled,  the  defendant 
in  order  to  secure  leave  to  contest  the  motion  further  was 
required  to  file  an  affidavit  that  the  demurrer  was  not  filed 
for  the  purpose  of  delay,  and  was  required  to  give  security 
to  pay  the  complainant  the  amount  of  any  money  decree 
to  which  the  delay  consequent  upon  the  demurrer  might 
afterward  be  found  to  entitle  him.24  The  equity  rules  en- 
forced February  1,  1913,  do  not  appear  to  have  wrought 
any  changes  which  will  call  for  any  different  practice  in 
the  case  of  a  motion  to  dismiss  than  as  formerly  existed 
in  the  case  of  a  demurrer. 

21  Sterrick  v.  Pugsley,  1  Central  v.  Steel  Motor  Co.,  105  F.  R.  959, 
Law  Journal,  106,  1874.  1898. 

22  Hodge  v.  Railroad  Co.,  6  24  Woodworth  v.  Edwards,  3 
Blatch.  85,  1868.  Woodbury  &  Minot,  131,  1847. 

33  Sprague  Electric  Motor  Co. 


750  INJUNCTIONS  [CHAP.    XXI. 

§  664.  A  temporary  restraining  order  may  be  made  by 
the  court,  where  there  appears  to  be  danger  of  irreparable 
injury  from  delay,  whenever  notice  is  given  of  a  motion 
for  a  preliminary  injunction;  and  formerly  such  an  order 
could  be  granted  with  or  without  security,  in  the  discre- 
tion of  the  court,  or  judge.25  Since  the  Clayton  Act26 
went  into  effect,  however,  security  must  be  required  as  a 
condition  of  granting  either  a  restraining  order  or  a  tem- 
porary injunction.  Where  defendant  denies  infringement 
since  the  beginning  of  the  suit,  and  states  that  he  has 
abandoned  infringement  and  will  not  further  infringe, 
danger  of  irreparable  injury  is  not  shown.27 

§  665.  In  deciding  whether  a  complainant  at  bar  has 
made  out  a  prima  facie  case  for  a  preliminary  injunction 
to  restrain  infringement  of  a  patent,  the  judge  is  guided  by 
the  presence  or  absence  of  two  presumptions  and  one  cer- 
tainty. Those  presumptions  relate  to  the  validity  of  the 
patent  and  to  the  defendant's  infringement  thereof,  and 
that  certainty  relates  to  the  complainant's  title  thereto.  If 
that  certainty  or  either  of  those  presumptions  is  absent 
in  a  given  case,  no  preliminary  injunction  will  be  granted 
except  in  unusual  circumstances;28  but  such  a  writ  will  be 
granted  where  they  are  all  present,  unless  the  defendant 
interposes  some  good  defence  to  the  motion,  or  unless  the 
court  takes  a  bond  from  the  defendant,  instead  of  sub- 
jecting him  to  an  injunction.  A  preliminary  injunction 
will  not  be  granted  when  defendant  is  responsible,  and  a 
substantial  doubt  of  infringement  exists,  or  where  the 
complainant's  right  is  doubtful.29 

25  Revised  Statutes,  Section  28  McMaster  v.  Daugherty  Mfg. 
718.  Co.,  219  F.  R.  219,  1914;  Stand- 

26  Act  October  15,  1914,  Chap,  ard  Typewriter  Co.  v.  Standard 
323,  Sec.  18,  38  Statutes  730.  F.  T.  S.  Co.,  181  F.  R.  500. 

27  Silver  &  Co.  v.  Eustis  Mfg.  M  Hallock  v.  Babcock,  124  F.  R. 
Co.,  130  F.  R.  348.  226,  1903. 


CHAP.    XXI. 


INJUNCTIONS 


751 


A  special  presumption  that  the  patent  is  valid,  lies  at 
the  foundation  of  a  patentee's  right  to  a  preliminary  in- 
junction.30 That  presumption  does  not  arise  out  of  the 
unattended  letters  patent,31  but  will  always  exist  where 
the  patent  has  been  suitably  adjudicated  in  a  Federal 
court,  and  there  held  to  be  valid; 32  or  where  the  validity 
of  the  patent  has  been  suitably  acquiesced  in  by  the  pub- 
lic; 33  or  where  the  defendant  at  bar  has  allowed  a  decree 
-pro  confesso  to  be  taken  against  him; 34  or  where  the 
defendant  does  not  deny  the  validity  of  the  patent ;  35 


30  Edward  Barr  Co.  v.  Sprinkler 
Co.,  32  F.  R.  80,  1887. 

"Foster  v.  Crossin,  23  F.  R. 
401,  1885;  Dickerson  v.  Machine 
Co.,  35  F.  R.  145,  1888;  Standard 
Elevator  Co.  v.  Crane  Elevator 
Co.,  56  F.  R.  719,  1893;  Smith  v. 
Meriden  Britannia  Co.,  92  F.  R. 
1003,  1899;  Planters'  Compress 
Co.  v.  Moore  &  Sons'  Co.,  106 
F.  R.  500,  1901;  Brunswick- 
Balke-Collender  Co.  v.  Koehler  & 
Hinrichs,  115  F.  R.  649,  1902;  but 
see  Palmer  v.  Wilcox  Mfg.  Co., 
141  F.  R.  378,  1905,  where,  how- 
ever, the  prior  art  appears  not  to 
have  been  shown. 

32  Orr  v.  Littlefield,  1  Woodbury 
&  Minot,  13,  1845;  Edison  Elec- 
tric Light  Co.  v.  Beacon  Electrical 
Co.,  54  F.  R.  679, 1893;  Thomson- 
Houston  Electric  Co.  v.  Ohio 
Brass  Co.,  78  F.  R.  141,  1896; 
Societe  Anonyme  v.  Allen,  84 
F.  R.  823,  1897;  Adam  v.  Folger, 
120  F.  R,  261,  1903;  Leeds  & 
Catlin  v.  Victor  Talking  Machine 
Co.,  213  U.  S.  301,  1909. 


Contra,  where  a  weak  defense 
was  made  in  the  prior  suit,  the  de- 
fendant having  little  interest  in 
the  outcome,  and  the  issue  of  va- 
lidity was  not  seriously  contested. 
Silver  &  Co.  v.  Eustis  Mfg.  Co., 
130  F.  R.  348,  1904;  Diamond 
Match  Co.  v.  Union  Match  Co., 
129  F.  R.  602,  1904. 

33  Goodyear  v.  Railroad  Co.,  1 
Fisher,  626,  1853;  American  Mid- 
dlings Purifier  Co.  v.  Christian,  3 
Bann.  &  Ard.  48,  1877;  White  v. 
Surdam,  41  F.  R.  791, 1890;  White 
v.  Hunter,  47  F.  R.  819,  1891; 
Sessions  v.  Gould,  49  F.  R.  856, 
1892;  Palmer  v.  Mills,  57  F.  R. 
222,  1893;  Corser  v.  Overall  Co., 
59  F.  R.  781,  1893;  Silver  &  Co. 
v.  Eustis  Mfg.  Co.,  130  F.  R,  348, 
1904;  Crescent  Specialty  Co.  v. 
National  Fireworks  Distributing 
Co.  (stating  the  rule  in  the  sixth 
circuit),  219  F.  R.  130,  1915. 

34  Schneider  v.  Bassett,  13  F.  R. 
351,  1882. 

35  Sickles  v.  Mitchell,  3  Blatch. 
548,    1857;    New    York    Grape 


7')'2  INJUNCTIONS  [CHAP.    XXI. 

or  where  he  is  estopped  from  doing  so;  8fl  and  that  pre- 
sumption will  sometimes  exist  where  the  patent  has  suc- 
cessfully undergone  an  interference  or  other  contested 
proceeding  in  the  Patent  Office.37 

§  666.  An  adjudication  in  another  case,  in  order  to  fur- 
nish a  suitable  foundation  for  a  right  to  a  preliminary 
injunction,  must  have  resulted  in  favor  of  the  patent  in  a 
regular  hearing  in  equity,  or  on  the  trial  of  an  action  at 
law.88  Of  these,  the  former  raises  the  stronger  presump- 
tion,39 but  most  of  the  considerations  wrhich  apply  to  it, 
apply  also  to  the  latter.  An  interlocutory  decree  in  another 
case  is  as  good  a  foundation  for  a  right  to  an  injunction  as 
a  final  decree  wrould  be;  40  because  an  interlocutory  decree 
settles  all  pending  questions  of  validity,  and  a  final  decree 
merely  reiterates  its  conclusions  on  that  point.  An  ad- 
judication of  a  prior  suit  based  on  the  first  term  of  a  pat- 
ent, may  be  made  the  foundation  of  a  right  to  a  prelimi- 
nary injunction  to  restrain  infringement  of  an  extended 
term  of  the  same  patent.41  But  no  adjudication  of  a  suit 
based  on  an  original  patent,  can  be  invoked  as  a  basis  for 
a  preliminary  injunction  to  restrain  infringement  of  any 
new  claim  contained  in  a  reissue  thereof.42  Though  an 
injunction  in  favor  of  one  claim  of  a  patent  is  a  basis  for 

Sugar    Co.    v.    American    Grape  38  Doughty  v.  West,  2  Fisher, 

Sugar  Co.,  10  F.  R.  835,  1882.  559,  1865. 

38  Time  Telegraph  Co.  v.  Him-  39  Goodyear  v.  Mullee,  3  Fisher, 

mer,  19  F.  R.  322j  1884.  420,  1868;  Panoulias  v.  Hawley, 

37  Pentlarge     v.     Beeston,     14  178  F.  R.  101,  1910. 

Blatch.  354,  1877;  Smith  v.  Halk-  4»  Potter   v.    Fuller,    2   Fisher, 

yard,  16  F.  R.  414,  1883;  Consoli-  251,  1862. 

dated  Apparatus  Co.  v.  Brewing  41  Clum   v.    Brewer,    2   Curtis, 

Co.,  28  F.   R.  428,   1886;  Min-  507,  1855;  Tilghman  v.  Mitchell, 

neapolis  Harvester  Works  v.  Ma-  4  Fisher,  615,  1871. 

chine  Co.,  2S  F.  R.  565,   1886;  « Poppenhusen     v.     Falke,     2 

Dickerson    v.    Machine    Co.,    35  Fisher,  181,  1861. 
F.  R.  147,  1888. 


CHAP.    XXI. J  INJUNCTIONS  753 

a  preliminary  injunction  on  another  claim,  specifying  the 
same  invention  in  narrower  terms.43 

Where  the  prior  adjudication  was  that  of  the  Supreme 
Court  or  of  a  Circuit  Court  of  Appeals,  it  is  conclusive  of 
the  questions  it  covered;  44  and  where  the  prior  adjudica- 
tion was  that  of  a  Circuit  or  District  Court,  it  will  be  fol- 
lowed, unless  it  is  inconsistent  with  some  other  decision 
of  equal  or  higher  rank; 45  and  a  verdict  of  a  jury,  which 
is  supplemented  by  a  refusal  to  grant  a  new  trial,  and  by 
the  entry  of  a  judgment  thereon,  has  the  same  weight  as 
an  adjudication  in  equity.46  But  a  prior  adjudication  of 
a  court  of  some  foreign  nation  or  dominion,  is  not  control- 
ling, though  it  is  entitled  to  fair  consideration  as  embody- 
ing the  opinion  of  a  judicial  tribunal.47  And  where  the 
prior  adjudication  was  based  upon  an  estoppel,48  or 
upon  some  other  ground  than  recognized  validity  of  the 
patent,49  or  upon  consent,50  it  does  not  constitute  any 
ground  for  a  preliminary  injunction  against  another 
defendant. 

It  is  the  established  practice  in  the  second  circuit 
to  refuse  a  preliminary  injunction  in  the  absence  of  proof 
of  prior  adjudication  or  public  acquiescence  when  there 

43  Sawyer  Spindle  Co.  v.  Taylor,  46  Woodard  v.  Gas-Stove  Co.,  68 
56  F.  R.  110,  1893.  F.  R.  717,  1895. 

44  American  Bell  Telephone  Co.  47  Carter  v.  Wollschlaeger,  53 
v.  McKeesport  Tel.  Co.,  57  F.  R.  F.  R.  575,  1892. 

661,  1893;  Edison  Electric  Light  48  Ney  Mfg.  Co.  v.  Drill  Co.,  56 

Co.  v.  Philadelphia  Trust  Co.,  60  F.  R.  153,  1893. 

F.  R.  397,  1894;  Interurban  Ry.  &  49  Empire      State     Nail     Co. 

Terminal    Co.    v.    Westinghouse  v.    Button    Co.,    61    F.    R.  650, 

Electric  &  Mfg.  Co.,  186  F.  R.  1894. 

166,  1911.  50New  York  Button  Works  v. 

45  Pullman  Palace  Car  Co.  v.  Crescent  Button  Co.,  185  F.  R. 
Wagner  Palace  Car  Co.,  44  F.  R,  820,  1910. 

765,  1891;  Wilgus  v.  Van  Sickle,         See  Section  672. 
99  F.  R.  443,  1900. 


754  [NJUNCTIONS  [CHAP.    XXI. 

is  any  fair  question  as  to  invention,  anticipation,  construc- 
l  ion,  infringement,51  or  title.52  But  the  fact  that  no  prior 
adjudication  or  public  acquiescence  is  shown  is  not  ground 
for  refusing  the  injunction  where  there  is  no  substantial 
question  as  to  validity.53  The  rules  governing  the  granting 
of  preliminary  injunctions  in  the  sixth  circuit  are  set 
forth  in  the  case  of  City  of  Grand  Rapids  v.  Warren  Bros. 
Co.54 

§  667.  Public  acquiescence  sufficient  to  create  a  pre- 
sumption of  validity,  and  therefore  sufficient  to  furnish  a 
foundation  for  a  right  to  a  preliminary  injunction,  may 
arise  out  of  either  of  two  classes  of  facts.  It  may  arise 
where  the  patentees  made  and  sold  specimens  of  the 
patented  article  for  many  years,  during  which  no  other 
person  assumed  to  make  any  such  specimens; 55  or  it  may 
arise  where  the  patentee  long  licensed  others  to  make,  use, 
or  sell  such  specimens,  while  nobody  assumed  to  do  either 
without  such  a  license  from  him;  and  the  acquiescence  is 
quite  as  positive  in  this  case  as  in  the  other.56  But  acquies- 
cence in  exclusive  use  of  a  thing  which  contains  several 
patented  inventions,  does  not  raise  a  special  presumption 

51  Newhall  v.  McCabe  Hanger  54  City  of  Grand  Rapids  v. 
Mfg.  Co.,  125  F.  R.  919,  1903;  Warren  Bros.  Co.,  196  F.  R.  892, 
Standard  Plunger  Elevator  Co.  v.      1912. 

Stokes,  196  F.  R.  47,  1912.  "  Sargent  v.  Seagrave,  2  Curtis, 

52  Armat  Moving  Picture  Co.  v.  557,  1855;  Covert  v.  Curtis,  25 
Edison  Mfg.  Co.,  125  F.  R.  939,  F.  R.  43,  1885;  National  Typo- 
1903;  Alphons  Custodie,  etc.,  Co.  graphic  Co.  v.  New  York  Typo- 
v.  Heinicke,  135  F.  R.  552,  1904.  graph  Co.,  46  F.  R.  116,  1891; 

53  Hall  Signal  Co.  v.  General  Blount  v.  Societe,  53  F.  R.  102, 
Ry.  Signal  Co.,  153  F.  R.  907,  1892;  Crescent  Specialty  Co.  v. 
1907;  Lambert  Snyder  Vibrator  National  Fireworks  Distributing 
Co.    v.    Marvel    Vibrator    Co.,  Co.,  219  F.  R.  130,  1915. 

138  F.  R.  82,  1905;  Boyce  v.  5G  Thomson  Electric  Welding 
Stewart-Warner  Speedometer  Co.  v.  Two  Rivers  Mfg.  Co.,  63 
Corporation,  220  F.  R.  118,  1914.      F.  R.  121,  1894. 


CHAP.   XXI.]  INJUNCTIONS  755 

of  validity  in  favor  of  any  particular  one  of  the  patents 
involved;  "  and  when  acquiescence  stops  for  good  reasons, 
the  special  presumption  of  validity  which  rested  upon  it 
comes  also  to  an  end; 58  and  mere  manufacture  and  sale 
of  a  patented  article  does  not  constitute  acquiescence  in 
the  patent  which  claims  it.59 

§  668.  The  length  of  time  necessary  to  make  exclusive 
possession,  of  the  first  sort,  available  on  a  motion  for  a 
preliminary  injunction,  depends  upon  the  nature  of  the  in- 
vention, and  on  the  extent  to  which  a  good  invention  of  the 
sort  would  naturally  be  used  if  it  were  free  to  the  public ; 
and  upon  the  popularity  of  that  particular  invention  with 
that  part  of  the  public  likely  to  want  an  article  of  that 
kind.60  Where  nobody  but  the  patentee  had  any  use  for 
the  article  during  the  time  of  the  alleged  acquiescence, 
or  where  its  merits  were  prized  so  low  that  nobody  else 
cared  to  adopt  it;  no  lapse  of  time  has  any  tendency  to 
raise  a  presumption  that  the  patent  is  valid.61  Acqui- 
escence in  claims  which  nobody  cared  to  dispute  when 
the  acquiescence  occurred,  has  no  tendency  to  show  that 
those  claims  are  valid.62 

But  where  all  persons,  other  than  the  owner  of  the  pat- 
ent, refrain  from  making,  using,  or  selling  specimens  of  the 
patented  article  merely  because  it  is  patented,  and  not- 
withstanding it  would  otherwise  be  for  their  interest  to 
adopt  it,  their  acquiescence  shows  their  conviction  that 

57  Upton  v.  Wayland,  36  F.  R.  8°  Doughty  v.  West,  2  Fisher, 

691,  1888;  Geo.  Ertel  Co.  v.  Stahl,  559,  1865. 

65   F.   R.   521,    1895;   Welsbach  "Raymond    v.    Woven    Hose 

Light  Co.  v.  Benedict  &  Burnham  Co.,  39  F.  R.  366,  1889;  Consoli- 

Mfg.  Co.,  82  F.  R.  748,  1897.  dated  Fastener  Co.  v.  American 

58Wollensak    v.     Sargent,     33  Fastener    Co.,    94    F.    R.    523, 

F.  R.  843,  1888.  1899. 

59  Geo.  Ertel  Co.  v.  Stahl,  65  «aGeo.  Ertel  Co.  v.  Stahl,  65 

F.  R.  521,  1895.  F.  R.  521,  1895. 


756  INJUNCTIONS  [chap.   XXI. 

the  patent  is  valid;03  a  conviction  presumably  based  on 
inquiry,  because  persons  are  not  likely  to  acquiesce  in 
adverse  rights  without  any  investigation  of  their  sound- 
ness.64 In  a  case  of  the  latter  sort,  any  acquiescence 
which  is  shown  by  lapse  of  time  to  be  general  and  to  be 
genuine,  will  be  sufficient  to  sustain  a  preliminary  in- 
junction.65 Two  years  have  been  found  to  be  ample  in  a 
case  where  the  patentee  made  and  sold  105,000  specimens 
of  his  patented  apple-paring  machine  during  that  time,66 
and  in  another  case,  eight  years,  in  which  the  patentee 
made  and  sold  150  specimens  of  his  patented  machine  for 
cutting  leather  for  shoe  soles,  were  held  to  be  sufficient.67 
§  669.  The  length  of  time  necessary  to  make  exclusive 
possession,  of  the  second  sort,  available  on  a  motion  for  a 
preliminary  injunction  will  depend  largely  upon  whether 
the  licenses  granted,  were  granted  in  consideration  of  the 
payment  of  substantial  royalties,  or  for  such  an  insignifi- 
cant price  as  indicates  that  they  were  issued  for  the  sole 
purpose  of  raising  a  presumption  of  public  acquiescence. 
In  the  former  case,  it  is  safe  to  assume  that  sales  of  li- 
censes will  be  quite  as  rapidly  efficacious  in  the  desired 
direction  as  sales  of  specimens  of  the  patented  invention ; 68 
while  in  the  latter  case,  a  long  and  genuine  payment  of 
royalties  will  be  necessary  to  give  the  licenses  any  im- 
portance in  respect  of  preliminary  injunctions  against 
third  parties. 

63  National  Typographic  Co.  v,  65  Orr  v.  Littlefield,  1  Woodbury 
New  York   Typograph   Co.,    46      &  Minot,  17,  1845. 

F.  R.  116,  1891;  Keasbey  &  Mat-  68  Sargent  v.  Seagrave,  2  Curtis, 

tison  Co.  v.  Philip  Carey  Mfg.  Co.,  557,  1855. 

110  F.  R.  747,  1901.  67  Foster   v.   Moore,    1   Curtis, 

64  Grover     &     Baker     Sewing  279,  1852. 

Mach.  Co.  v.  Williams,  2  Fisher,         fl8  Grover     &     Baker     Sewing 
134,  1860.  Mach.  Co.  v.  Williams,  2  Fisher, 

138,  1860. 


CHAP.    XXI.]  INJUNCTIONS  757 

§  670.  Public  acquiescence  is  strengthened  rather  than 
weakened,  as  a  foundation  to  a  right  to  a  preliminary  in- 
junction, by  the  fact  that  some  persons  for  a  while  re- 
fused to  join  in  it,  but  on  receiving  further  information, 
submitted  to  the  exclusive  right  claimed  by  the  patentee. 
Such  a  submission  is  generally  the  most  persuasive  de- 
gree of  acquiescence,69  and  is  certainly  so  where  the  sub- 
mission was  costly  to  him  who  submitted.70  Nor  is  uni- 
versal acquiescence  necessary  to  be  shown  as  existing  at 
the  time  of  the  motion;  for  if  it  were  necessary  and  were 
shown,  it  would  prove  that  the  defendant  himself  is  not 
infringing  the  patent,  and  thus  negative  that  part  of  the 
foundation  of  the  case.71 

But  a  preliminary  injunction  will  not  be  granted  on  any 
basis  of  acquiescence,  where  the  defendant  has  been  long 
in  possession  and  use  of  the  invention,  adverse  to  the 
claim  of  the  complainant,  and  under  a  claim  and  color 
of  right.72  In  fact  it  may  be  stated  as  a  general  proposi- 
tion that,  although  validity  and  infringement  be  proven, 
the  court  will  consider  the  relative  benefits  to  the  parties, 
and  when  the  injury  likely  to  be  inflicted  on  the  defendant 
is  pronouncedly  greater  than  the  benefits  to  be  derived  by 
the  plaintiff  by  the  issuance  of  the  injunction,  the  injunc- 
tion will  be  denied.73  No  acquiescence  in  an  original 
patent  can  be  made  the  basis  of  a  right  to  a  preliminary 
injunction  to  restrain  infringement  of  any  claim  in  a 
reissue  of  that  patent,  unless  that  claim  was  also  contained 

69  Sargent  v.  Seagrave,  2  Curtis,  206,  1871;  McDowell  v.  Kurtz,  77 
556, 1855;  Carter  v.  Wollschlaeger,      F.  R.  208,  1896. 

53  F.  R.  576,  1892.  "  Isaacs  v.  Cooper,  4  Washing- 

70  Corbin  Lock  Co.  v.  Yale  &      ton,  259,  1821. 

Towne  Mfg.  Co.,  58  F.  R.  565,         73  Kryptok  Co.  v.  Stead  Lens 
1893.  Co.,  190  F.  R.  767,  1911;  City  of 

71  McComb  v.  Ernest,  1  Woods,      Grand   Rapids   v.   Warren   Bros. 

Co.,  196  F.  R.  892,  1912. 


758  INJUNCTIONS  [chap.   XXI. 

in  the  original.74  But  where  some  applicable  acquiescence 
is  proved,  it  would  be  strengthened,  as  a  foundation  for  a 
preliminary  injunction,  by  the  fact  that  it  has  been  tried 
as  such  a  foundation  in  another  case,  by  basing  a  prelimi- 
nary injunction  upon  it.75 

§  671.  A  decree  pro  confesso  entered  in  a  case,  raises  a 
sufficient  presumption  of  the  validity  of  the  patent  to 
support  a  right  to  a  preliminary  injunction  in  that  case; 76 
but  there  is  no  ground  for  giving  such  a  decree  such  an 
operation  in  any  case  against  another  defendant.77 

§  672.  A  consent  decree  is  one  which  is  entered  by  the 
consent  of  both  parties,  when  the  defendant  is  not  in 
default,  and  before  the  judge  has  decided  the  case  on  its 
merits.  A  consent  decree  in  a  patent  case  can  never  be  a 
proper  foundation  for  a  right  to  a  preliminary  injunction 
against  third  persons;  unless  it  appears  from  the  nature 
of  the  patented  thing,  or  from  convincing  evidence,  that 
the  defendant  consented  to  the  decree  because  his  de- 
fence had  become  hopeless,  and  not  because  it  had  be- 
come inexpedient  regardless  of  its  strength.  This  can 
seldom  or  never  be  shown,  because  the  motive  of  the  con- 
senting defendant  can  seldom  or  never  be  known.  Con- 
sent decrees  are  therefore  useless  on  motions  for  pre- 
liminary injunctions,  against  anyone  other  than  the  con- 
senting defendant,  or  someone  in  privity  with  him.78 

74Grover     &     Baker     Sewing  &    Ard.    437,    1878;    American 

Mach.  Co.  i\  Williams,  2  Fisher,  Electrical  Novelty  Co.  v.  New- 

144,  1860.  gold,  99  F.  R.  567,  1900. 

75  Blount  v.  Societe,  53  F.  R.  78  Spring  v.  Domestic  Sewing 
102, 1893;  Carter  v.  Wollschlaeger,  Machine  Co.,  4  Bann.  &  Ard.  427, 
53  F.  R.  575,  1892;  Carter-Crume  1879;  Hayes  v.  Leton,  5  F.  R.  521, 
Co.  v.  Ashley,  68  F.  R.  379,  1895.  1881;  De  Ver  Warner  v.  Bassett, 

76  Schneider  v.  Bassett,  13  F.  R.  7  F.  R.  468,  1881;  Keyes  v.  Re- 
351,  1882.  fining  Co.,  31  F.  R.  561,   1887; 

77  Everett  v.  Thatcher,  3  Bann.  Wollensak  v.  Sargent,  33  F.  R. 


CHAP.    XXI.]  INJUNCTIONS  759 

§  673.  Where  a  defendant  admits  or  does  not  deny  in 
his  pleadings,  the  validity  of  the  patent  upon  which  a 
preliminary  injunction  is  sought  against  him,  there  seems 
to  be  no  reason  why  such  an  admission  or  lack  of  denial 
should  not  raise  a  sufficient  presumption  of  that  validity 
to  furnish  a  foundation  to  a  right  to  a  preliminary  injunc- 
tion in  that  case.79  As  between  the  parties  to  a  motion, 
the  court  may  properly  assume  every  statement  of  fact 
to  be  true  which  is  made  by  the  complainant,  and  expressly 
or  tacitly  admitted  by  the  defendant.  And  where  the 
validity  of  a  patent  is  disputed  on  no  ground,  except  one 
which  is  susceptible  of  an  immediate  and  correct  decision, 
such  a  decision  may  be  made  on  a  motion  for  a  preliminary 
injunction,  and  may  result  in  the  granting  of  the  injunc- 
tion, if  the  decision  is  favorable  to  the  patent.80 

§  674.  An  interference  decision  of  the  Patent  Office 
raises  a  sufficient  presumption  of  validity  to  furnish  a 
foundation  for  a  preliminary  injunction,  where  the  de- 
fendant is  the  person,  or  the  legal  representative  or  as- 
signee of  the  person  who  was  defeated  in  the  interference, 
and  where  he  denies  the  validity  of  the  patent  on  no  other 
ground  than  that  the  decision  of  the  Patent  Office  on  the 
question  of  priority  in  the  interference  was  wrong.81  But 
such  an  interference  decision  cannot  be  invoked  against 

843,    1888;    Tibbe    Mfg.    Co.    v.  v.  American  Grape  Sugar  Co.,  10 

Heineken,  37  F.   R.   686,    1889;  F.  R.  835,  1882;  Lane  v.  Levi,  104 

Bowers    Dredging    Co.    v.    New  O.  G.  1899,  1903. 

York  Dredging  Co.,  77  F.  R.  984,  80  Foster  v.  Crossin,  23  F.  R. 

1896;    Western    Electric    Co.    v.  400,  1885. 

Williams-Abbott  Electric  Co.,  83  S1  Pentlarge     v.     Beeston,     14 

F.R.842, 1897;  Earll  v.  Rochester  Blatch.    354,    1877;    Holliday   v. 

S.  &  E.  R.  Co.,  157  F.  R,  241,  Pickhardt,   12  F.   R.   147,   1882; 

1907.  Perfection    Cooler    Co.    v.    Pose 

See  Section  666.  Mfg.  Co.,  175  F.  R.  120,  1909. 

79  New  York  Grape  Sugar  Co. 


760  INJUNCTIONS  [CHAP.    XXI. 

third  parties,  because  it  does  not  rise  to  the  dignity  and 
force  of  an  adjudication  of  a  court,82  unless  the  question 
of  priority  as  between  the  two  patents  at  issue  in  the 
interference  is  the  only  question  at  issue  in  the  suit.88 
However,  a  decision  of  the  Court  of  Appeals  of  the  District 
of  Columbia  on  an  appeal  from  a  decision  of  the  Commis- 
sioner of  Patents  in  an  interference  establishes  a  primary 
case  of  validity  on  a  motion  for  a  preliminary  injunction 
even  as  against  third  parties.81  But  an  interference  de- 
cision cannot  be  invoked  as  against  any  defence  not  in- 
volved in  it,  because  it  has  no  relevancy  to  any  such 
defence.85  And  where  the  defeated  party  in  the  inter- 
ference, contended  in  the  Patent  Office  that  the  patent 
should  not  issue  to  the  other  party,  because  the  invention 
was  in  public  use  or  on  sale  in  this  country,  more  than  two 
years  before  that  party  filed  his  application,  the  decision 
of  the  Patent  Office  to  the  contrary,  does  not  raise  a 
sufficient  presumption  of  validity  to  furnish  a  foundation 
for  a  preliminary  injunction  against  anyone.86 

§  675.  The  complainant's  title  to  the  patent  upon  which 
a  preliminary  injunction  is  asked  must  be  clear,  or  the 
injunction  will  be  refused.87  The  best  evidence  of  that 
title  is  found  in  the  patent,  if  the  complainant  is  the  pat- 

82  Edward  Barr  Co.  v.  Sprinkler  Co.  v.  White  Racker  Co.,  145 
Co.,  32  F.  R.  80,  1887;  Western      F.  R.  643,  1906. 

Electric  Co.   v.   Williams-Abbott  84  Scott  v.  Laas,  150  F.  R.  764, 

Electric  Co.,  83  F.  R.  842,  1897;  1907. 

Wilson  v.  Consolidated  Store  Ser-  85  Greenwood     v.     Bracher,     1 

vice   Co.,   88   F.   R.   288,    1898;  F.  R.  856,  1880. 

Westinghouse  Elec,  etc.,  Co.  v.  86  Empire    State    Nail    Co.    v. 

Roberts,  125  F.  R.  6,  1903;  Hil-  American  Button  Co.,  61  F.  R. 

dreth  v.  Curtis  &  Son  Co.,  157  650,  1894. 

F.  R.  394,  1907.  87  Mowry   v.    Railroad    Co.,    5 

83  Laas  v.  Scott,  145  F.  R.  195,  Fisher,  587,  1872. 
1906;  Automatic  Racking  Mach. 


CHAP.    XXI.]  INJUNCTIONS  -  701 

entee;  but  if  he  is  an  assignee  or  grantee  of  the  patentee, 
he  must  produce  and  prove  the  original  assignments  or 
grants  which  constitute  his  title,  or  otherwise  prove  his 
ownership.88  Where  the  complainant's  title  papers  re- 
quire judicial  construction,  in  order  to  determine  their 
legal  effect,  it  is  the  duty  of  the  court  to  give  them  that 
construction  upon  a  motion  for  a  preliminary  injunction, 
rather  than  to  postpone  the  question  to  a  final  hearing, 
unless  it  is  made  to  appear  that  evidence  aliunde  is  neces- 
sary to  their  proper  interpretation.89 

§  076.  Infringement  or  danger  of  infringement  by  the 
defendant  must  be  clearly  proved  by  a  complainant,  in 
order  to  entitle  him  to  a  preliminary  injunction.90  Danger 
of  infringement  can  be  proved  by  evidence  that  the  de- 
fendant has  advertised  infringing  articles  for  sale; 91  and 
also  by  evidence  that  he  has  in  his  possession,  articles  the 
use  of  which  would  infringe  the  patent  on  which  the  suit 
is  based.  The  first  of  these  items  of  evidence  is  conclusive; 
but  the  second  can  be  counteracted  by  proof  that  there  is 
no  intention  and  no  prospect  of  using  or  selling  the  articles 
in  this  country,  at  any  time  during  the  life  of  the  patent. 

88  Section  495  of  this  book.  Bowers    Dredging    Co.    v.    New 

89  Clum  v.  Brewer,  2  Curtis,  York  Dredging  Co.,  80  F.  R.  120, 
507,  1855;  Dodge  v.  Card,  2  1897;  Hatch  Storage  Battery  Co. 
Fisher,  116,  1860.  v.  Electric  Storage  Battery  Co., 

">  Pullman  v.  Railroad  Co.,  5  100   F.    R.    976,    1900;    Chester 

F.  R.  72,  1880;  California  Elec-  Forging  Co.  v.  Tindal-Morris  Co., 

trical  Works  v.  Henzel,  48  F.  R.  165  F.  R.  899,  1908. 

377,     1891;    Standard    Elevator  91  California   Electrical   Works 

Co.   v.   Crane  Elevator  Co.,   56  v.  Henzel,  48  F.  R.  377, 1891;  New 

F.  R.  719,  1893;  Brush  Electric  York  Belting  Co.  v.  Gutta  Percha 

Co.  v.  Storage  Battery  Co.,  64  Mfg.  Co.,  56  F.  R.  264,   1892; 

F.  R.  776,  1894;  Geo.  Ertel  Co.  Sessions  v.  Gould,  49  F.  R,  856, 

v.  Stahl,  65  F.  R.  518,  1895;  West-  1892;  Thomson-Houston  Electric 

em  Telephone  Construction  Co.  Co.  v.  Ohio  Brass  Co.,  78  F.  R. 

v.  Stromberg,  66  F.  R,  551,  1895;  139,  1896. 


7(i2  -  EN  JUNCTIONS  [CHAP.    XXI. 

And  danger  of  infringement  is  not  proved  by  evidence 
that  the  defendant  made,  used  or  sold  specimens  of  the 
subject  of  the  patent,  before  the  patent  was  granted.92 
A  single  sale  made  under  circumstances  which  indicate  a 
readiness  to  make  other  similar  sales  upon  application  is 
sufficient  to  make  out  a  prima  facie  case  of  intent  which 
will  justify  the  issuance  of  an  injunction.93 

It  must  also  appear  that  irreparable  injury  to  the  com- 
plainant will  result  from  infringement  if  it  be  continued 
during  the  pendency  of  the  suit,  and  the  fact  that  the  de- 
fendant is  a  mere  user  tends  strongly  to  negative  such  a 
possibility.94 

Proof  of  infringement  cannot  be  made  by  affidavits 
which  merely  state  that  conclusion  of  fact.  The  com- 
plainant must  prove  the  specific  character  of  the  defend- 
ant's doings.95  Upon  that  evidence  the  court  will  examine 
and  decide  the  question  of  infringement  in  the  light  of 
whatever  expert  testimony  the  case  may  contain,96  and 
in  the  light  of  whatever  construction  of  the  patent  it  finds 
on  examination  to  be  just;97  and  that  construction  will 
generally  be  guided  and  governed  by  the  construction 
which  was  given  to  the  patent  in  the  adjudicated  case 
upon  which  the  special  presumption  of  validity  is  based,98 
and  where  the  facts  are  substantially  the  same  in  the  two 
cases,  the  former  decision  will  be  followed.99    But  where 

92  Brill  v.  St.  Louis  Car  Co.,  80  98  Blanchard  v.  Reeves,  1 
F.  R.  910,  1897.  Fisher,  105,  1850. 

93  Hutter  v.  DeQ.  Bottle  Stop-  97  Many  v.  Sizer,  1  Fisher,  33, 
per  Co.,  128  F.  R.  283,  1904.  1849;  Clum  v.  Brewer,  2  Curtis, 

94  Jefferson  Electric  Light,  etc.,  507,  1855;  Coburn  v.  Clark,  15 
Co.    v.    Westinghouse    Electric,  F.  R.  807,  1883. 

etc.,  Co.,  134  F.  R.  392,  1905.  98  Mallory  Mfg.  Co.  v.  Hickok, 

95Kirby    Bung    Mfg.    Co.    v.      20  F.  R.  116, 1884;  Carter-Crume 

White,  1  McCrary,  160,  1880.  Co.  v.  Ashley,  68  F.  R.  379,  1895. 

99  S.    S.    White    Dental    Mfg. 


CHAP.    XXI. 


INJUNCTIONS 


763 


the  question  of  infringement  depends  on  a  new  and  en- 
larged construction  of  the  patent,  a  preliminary  injunc- 
tion will  be  denied.100  And  if  the  court  is  unable  to  arrive 
at  a  conclusion  without  the  aid  of  further  evidence,  it 
will  decline  to  grant  the  injunction  till  that  evidence  is 
supplied;  101  though  it  may  require  the  defendant  to  give 
bonds  and  to  keep  an  account  of  his  doings  which  are 
alleged  to  infringe;  102  and  the  court  will  not  grant  a  pre- 
liminary injunction  where  the  question  whether  the 
defendant's  doings  constitute  an  infringement  of  the  com- 
plainant's patent  is  a  doubtful  question.103 

In  order  to  entitle  the  complainant  to  a  preliminary 
injunction,  it  is  not  necessary  for  him  to  prove  that  the 
defendant's  infringement  has  not  ceased  before  the  motion 
is  heard.104    Indeed,  no  injunction  can  usually  be  averted 


Co.    v.   Johnson,    56  F.  R.  263, 
1893. 

100  Thomson-Houston  Electric 
Co.  v.  Exeter  Ry.  Co.,  110  F.  R. 
987,  1901. 

101  United  States  Annunciator 
Co.  v.  Sanderson,  3  Blatch.  186, 
1854;  Howe  v.  Morton,  1  Fisher, 
600,  1860;  Boyd  v.  McAlpin,  3 
McLean,  430,  1844;  Carey  v. 
Miller,  34  F.  R.  392,  1888; 
Menasha  Wood  Split  Pulley  Co. 
v.  Dodge,  85  F.  R.  976,  1897. 

102  Macbeth  v.  Lippencott  Glass 
Co.,  54  F.  R.  167,  1893. 

103  Jenkins  v.  Ruberg,  39  F.  R. 
611,  1889;  Russell  v.  Hyde,  39  F. 
R.  614,  1889;  Boston  Electric  Co. 
v.  Holtzer,  41  F.  R.  390,  1890; 
Judson  L.  Thomson  Mfg.  Co.  v. 
Hatheway,  41  F.  R.  520,  1890; 
Celluloid    Mfg.    Co.    r,   Eastman 


Dry  Plate  Co.,  42  F.  R.  159, 
1890;  Hammond  Buckie  Co.  v. 
Goodyear  Rubber  Co.,  49  F.  R. 
274,  1892;  Williams  v.  McNeely, 
56  F.  R.  265,  1893;  Brush  Electric 
Co.  v.  Storage  Battery  Co.,  64 
F.  R.  775,  1894;  New  York  Air- 
Brake  Co.  v.  Westinghouse  Air- 
Brake  Co.,  69  F.  R.  715,  1895; 
Bowers  Dredging  Co.  v.  New 
York  Dredging  Co.,  77  F.  R.  984, 
1896;  American  Pneumatic  Tool 
Co.  v.  Bigelow  Co.,  77  F.  R.  991, 
1897;  National  Folding-Box  & 
Paper  Co.  v.  Brown  &  Bailey  Co., 
98  F.  R.  437,  1899;  American 
Sulphite  Pulp  Co.  v.  Burgess  Sul- 
phite Fibre  Co.,  103  F.  R.  981, 
1900;  Westinghouse  Electric  & 
Mfg.  Co.  v.  American  Trans- 
former Co.,  121  F.  R.  560,  1903. 
104  Jenkins     v.     Greenwald,     2 


Till  INJUNCTIONS  [CHAP.    XXI. 

by  affirmative  evidence  thai  (he  defendant  has  ceased  to 
infringe,  even  though  coupled  with  a  promise  that  he  will 
infringe  no  more.1"'1  Where  the  doings  of  the  defendant 
consisted  in  selling  an  article  alleged  to  infringe  the  com- 
plainant's patent,  it  is  immaterial  to  the  motion  for  a  pre- 
liminary injunction,  whether  the  sale  was  made  to  some 
stranger,  or  was  made  to  some  agent  of  the  complainant, 
who  bought  for  the  particular  purpose  of  getting  evidence 
of  infringement. lnfi 

Where  an  infringing  act  was  done  before  the  bill  was 
filed,  and  a  preliminary  injunction  was  granted  on  account 
thereof;  successive  preliminary  injunctions  may  be  ob- 
tained on  successive  motions  therefor,  to  suppress  succes- 
sive subsequent  acts  which  also  infringe,  though  those 
subsequent  acts  differed  from  what  was  done  before  the 
bill  was  filed.  But  where  no  act  was  done  or  was  threat- 
ened before  the  bill  was  filed,  which  appears  to  the  court 
to  be  an  infringement  of  the  patent  on  which  the  bill  was 
based,  no  injunction  will  be  granted  on  that  bill,  to  sup- 
press any  doings  begun  after  the  beginning  of  the  suit.107 

§  677.  The  defences  which  a  defendant  may  make  to  a 
motion  for  a  preliminary  injunction  may  be  by  way  of 
traverse,  or  by  way  of  confession  and  avoidance.  A  de- 
fence of  the  former  sort  consists  in  denying,  and  attempt- 
ing to  disprove,  one  or  more  of  the  facts  which  constitute 

Fisher,  37, 1857;  Potter  v.  Crowell,  Chemical  Bldg.  Co.,  93  F.  R.  827, 

3  Fisher,  112,  1866;  Goodyear  v.  1899. 

Berry,  3  Fisher,  439,  1868.  But  see  Section  701. 

105  Rumford  Chemical  Works  v.  m  Chicago  Pneumatic  Tool  Co. 

Vice,  14  Blatch.  179,  1877;  Cel-  v.  Philadelphia  Pneumatic  Tool 

luloid  Mfg.  Co.  v.  Mfg.  Co.,  34  Co.,  118  F.  R.  852,  1902. 

F.  R.  324,  1888;  Gilmore  v.  Ander-  m  Westinghouse  Air-Brake  Co. 

son,  38  F.  R.  847,  1889;  White  v.  v.  Christensen  Engineering  Co., 

Walbridge,  46  F.  R.  526,   1891;  121  F.  R.  558,  1903. 
New    York    Filter    Mfg.    Co.    v. 


CHAP.    XXI.]  INJUNCTIONS  765 

the  complainant 's  prima  facie  case.  A  denial  alone  is  use- 
less, even  where  it  is  embodied  in  an  answer.108  Where 
the  denial  is  supported  by  affidavits  which  contradict 
those  of  the  complainant,  the  judge  will  refuse  the  in- 
junction if  he  believes  the  defendant's  affidavits  to  be  the 
true  ones,  or  if  he  is  unable  to  decide  which  set  of  depo- 
nents tell  the  truth.109  No  remedy  invoked  in  patent  cases 
is  so  summary  in  operation,  or  so  dangerous  to  justice  as 
a  preliminary  injunction,  and  the  courts  will  not  apply 
that  remedy  to  cases  where  the  complainant's  prima  facie 
evidence  of  a  right  thereto,  is  overthrown  or  seriously 
damaged  by  the  evidence  of  the  defendant.110 

§  678.  Defences  by  way  of  confession  and  avoidance  to 
motions  for  preliminary  injunctions,  may  confess  and 
avoid  the  adjudication  or  acquiescence  upon  which  the 
plaintiff  bases  the  presumption  of  the  validity  of  his  pat- 
ent; or  may  interpose  any  one  of  several  facts  entirely 
outside  of  the  complainant's  prima  facie  case. 

§  679.  The  effect  of  an  adjudication  may  be  averted  by 
evidence  of  some  good  defence  to  the  patent,  together 
with  evidence  showing  that  defence  not  to  have  been 
interposed  in  the  prior  adjudicated  case.111     Several  of 

108  Clum  v.  Brewer,  2  Curtis,  Goodyear  v.  Allyn,  6  Blatch.  35, 
507,  1855.  1868;   Robinson  v.   Randolph,   4 

109  Cooper  v.  Mattheys,  3  Penn.  Barm.  &  Ard.  163,  1879;  Page  v. 
Law  Journal  Reports,  40,  1842.  Telegraph   Co.,    18  Blatch.    125, 

110  Welsbach  Light  Co.  v.  Cos-  1880;  Ladd  v.  Cameron,  25  F.  R. 
mopolitan  Gaslight  Co.,  100  F.  R.  37,  1885;  Fraim  v.  Iron  Co.,  27 
650,  1900.  F.  R.  457,   1886;  National  Ma- 

111  Parker  v.  Brant,  1  Fisher,  58,  chine  Co.  v.  Hedden,  29  F.  R.  149, 
1850;  Union  Paper-Bag  Machine  1886;  Glaenzer  v.  Wiederer,  33 
Co.  v.  Binney,  5  Fisher,  168, 1871;  F.  R.  583,  1887;  Holmes  Protec- 
American  Nicolson  Pavement  Co.  tive  Co.  v.  Alarm  Co.,  31  F.  R. 
v.  Elizabeth,  4  Fisher,  189,  1870;  562,  1887;  Travers  v.  Spreader 
Bailey  Wringing  Machine  Co.  v.  Co.,  35  F.  R.  133,  18S8;  Stuart  v. 
Adams,  ;-!  Bann.  &  Ard.  97,  1877;  Thorman,    37    F.    R,    90,    1888; 


766 


I  N.I  I    N«    I'lO.NS 


[chap.   XXI. 


the  lower  courts  and  Circuit  Courts  of  Appeals  have  held 
thai  such  a  new  defence  must  be  established  beyond  a 
reasonable  doubt;11-'  and  a  new  defence,  which  cannot 
endure  the  application  of  what  was  decided  in  the  adjudi- 
cated case,  must  fail  to  avert  a  preliminary  injunction.113 
But  the  effect  of  a  prior  adjudication  may  sometimes 
be  averted  by  showing  that  it  is  inconsistent  with  a  former 
decision  of  the  court  wherein  the  adjudged  case  is  in- 
voked,1" or  by  showing  that  the  adjudged  case  has  been 
again  taken  under  advisement  in  pursuance  of  a  motion 
for  a  rehearing,115  or  has  gone  no  further  than  a  verdict 
of  a  jury  which  is  still  pending  on  a  motion  for  a  new 
trial,110  or  has  been  taken  to  a  higher  court  for  review,117 
or  that  a  prior  use  not  pleaded  on  the  prior  adjudication 
would  have  caused  a  contrary  decision.118 


Jacobson  v.  Alpi,  40  F.  R.  767, 
1891;  Carter  v.  Fry,  54  F.  R.  883, 
1892;  Bowers  v.  San  Francisco 
Bridge  Co.,  69  F.  R.  644,  1895; 
Societe  Anonyme  v.  Allen,  84 
F.  R.  823,  1897;  American  Sul- 
phite Co.  v.  Burgess  Sulphite 
Fibre  Co.,  103  F.  R.  981,  1900; 
Brunswick-Balke-Collender  Co.  v. 
Koehler  &  Hinrichs,  115  F.  R. 
648,  1902. 

112  Accumulator  Co.  v.  Storage 
Co.,  53  F.  R.  800,  1893;  Edison 
Electric  Light  Co.  v.  Beacon  Elec- 
tric Co.,  54  F.  R.  679,  1893;  Edi- 
son Electric  Light  Co.  v.  Electric 
Mfg.  Co.,  57  F.  R.  616,  1893; 
Electric  Mfg.  Co.  v.  Edison  Elec- 
tric Light  Co.,  61  F.  R.  834,  1894; 
Philadelphia  Trust  Co.  v.  Edison 
Electric  Light  Co.,  65  F.  R.  553, 
1895;   Allington   &   Curtis    Mfg. 


Co.  v.  Lynch,  71  F.  R.  409,  1896; 
Tannage  Patent  Co.  v.  Adams,  77 
F.  R.  192,  1896;  Campbell  Print  - 
ing-Press  Co.  v.  Prieth,  77  F.  H. 
977,  1897;  Bowers  v.  Pacific  Coast 
Co.,  81  F.  R.  569,  1897. 

113  Sawyer  Spindle  Co.  v.  Tay- 
lor, 56  F.  R.  110,  1892;  Westing- 
house  Electric  &  Mfg.  Co.  v. 
Royal  Weaving  Co.,  115  F.  R. 
735,  1902. 

114  Pullman  Palace  Car  Co.  v. 
Wagner  Palace  Car  Co.,  44  F.  R. 
765,  1891. 

113  American  Graphophone  Co. 
v.  Leeds,  77  F.  R.  193,  1896. 

116  Day  v.  Hartshorn,  3  Fisher, 
34,  1855. 

117  Bowers  Dredging  Co.  v.  New 
York  Dredging  Co.,  77  F.  R.  984, 
1896. 

ll8Gamewell  Fire  Alarm  Tele- 


CHAP.    XXI.J  INJUNCTIONS  7(37 

But  courts  will  not  always  disregard  adjudications  which 
are  thus  suspended.  They  are  a  good  foundation  for  pre- 
liminary injunctions,  unless  the  defendant  can  convince 
the  judge  that  they  were  wrong.119  The  effect  of  a  pre- 
adjudication can  sometimes  be  averted  by  showing  that 
there  has  been  an  adjudication  against  the  validity  of 
the  patent,120  but  not  where  it  appears  that  the  lost 
cause  was  decided  on  a  part  only  of  the  material  evi- 
dence; m  nor  can  such  an  effect  be  averted  by  showing 
that  the  validity  of  the  patent  is  in  question  in  some  other 
case,  which  still  awaits  adjudication.12'2  Where  the  patent 
sued  upon  is  a  reissue  of  the  one  adjudicated,  a  substantial 
doubt  of  the  validity  of  the  reissue  as  a  reissue,  must  be 
solved  against  a  motion  for  a  preliminary  injunction.123 

§  680.  The  effect  of  acquiescence,  as  a  foundation  for  a 
preliminary  injunction,  may  be  averted  by  evidence  that 
it  was  not  general,  or  was  not  genuine :  by  proof  that  while 
some  acquiesced  in  the  patent,  many  others  did  not; 
or  by  proof  that  those  who  did  acquiesce,  did  so  collusivelv 
and  not  because  they  believed  the  patent  to  be  invulner- 
able. And  the  effect  of  acquiescence  may  also  be  averted 
by  evidence  or  arguments  which  clearly  show  that  the 
patent  is  really  invalid.124 

graph    Co.    v.    Hackensack    Im-  122  Atlantic  Giant  Powder  Co. 

provement  Commission,  199  F.  R.  v.    Goodyear,   3    Bann.    &   Ard. 

182,  1912.  161,    1877;    Allington    &   Curtis 

113Forbush     v.     Bradford,     1  Mfg.  Co.  v.  Lynch,  71  F.  R.  411, 

Fisher,  317,  1858;  Day  v.  Hart-  1896. 

shorn,  3  Fisher,  32,  1855;  Morris  123  Poppenhusen    v.    Falke,    2 

v.  Mfg.  Co.,  3  Fisher,  70,  1866;  Fisher,  181,  1861. 

Wells  v.  Gill,  6  Fisher,  89,  1872.  w«  Bradley   &    Hubbard    Mfg. 

120  Keyes  v.  Refining  Co.,  31  Co.  v.  The  Charles  Parker  Co.,  17 
F.  R.  560,  1887.  F.  R.  240,  1883;  Hat-Sweat  Mfg. 

121  United  States  Stamping  Co.  Co.  v.  Sewing  Machine  Co.,  32 
v.  King,  4  Bann.  &  Ard.  469,  1879.  F.  R.  403,  1887. 


768  INJUNCTIONS  [chap.   XXI. 

§  681.  The  fact  thai  the  patent  in  suit  will  soon  expire, 
is  sometimes  a  reason  for  granting  an  injunction  rather 
than  a  reason  for  refusing  that  remedy; I26  and  sometimes 
a  reason  for  refusing,  rather  than  granting  such  a  writ.' "fi 
The  fact  that  the  patent  sued  upon  has  been  repealed, 
or  that  it  has  expired  by  its  own  limitation,  or  because  of 
the  expiration  of  some  foreign  patent  for  the  same  inven- 
tion, is  of  course  a  good  defence  to  a  motion  for  a  pre- 
liminary injunction;  as  also  is  any  fact  which  overthrows 
the  title  of  the  complainant;  or  any  fact  which  shows  the 
conduct  of  the  complainant  or  his  privies  to  be  unjusti- 
fiable in  the  eye  of  equity.127  And  an  injunction  will  be 
denied  when  the  patent  in  suit  expired  before  the  decision 
of  the  motion,  though  it  had  not  expired  when  the  motion 
for  the  injunction  was  made.128 

§  682.  A  license  is  a  good  defence  to  a  motion  for  a  pre- 
hminary  injunction;  but  where  a  license  is  disputed,  it 
must  be  established  by  a  preponderance  of  proof.129  Where 
the  question  of  license  depends  upon  the  construction  of 
documents,  the  court  will  construe  them  on  a  motion  for  a 
preliminary  injunction,  unless  it  is  made  to  appear  that 
evidence  exists,  which  is  proper  and  necessary  to  be  pro- 
duced in  order  to  enable  the  judge  to  arrive  at  the  inten- 
tion of  the  parties  to  an  ambiguous  instrument.130  Where 
the  license  set  up  has  been  forfeited  for  non-payment  of 

125  American    Bell    Telephone  Co.  v.  Telegraph  Co.,  25  F.  R.  30, 

Co.  v.  Brown  Tel.  Co.,  58  F.  R.  1885. 

409,   1893;  Carter-Crume  Co.  v.  128  Huntington  Dry  Pulverizer 

Ashley,  68  F.  R.  379, 1895;  Wood-  Co.  v.  Virginia-Carolina  Chemical 

ard  v.  Gas  Stove  Co.,  68  F.  R.  Co.,  121  F.  R.  136,  1902. 
717,  1895.  129Armat  Moving  Picture  Co. 

128Vermilya   v.    Erie    Railroad  v.  Edison  Mfg.  Co.,   121  F.   R, 

Co.,  89  F.  R.  96,  1898.  559,  1902. 

127  Western    Union    Telegraph  13°  Hodge    v.    Railroad    Co.,    6 

Blatch.  165,  1868. 


CHAP.    XXI. j  INJUNCTIONS  769 

the  royalty,  a  preliminary  injunction  will  be  granted,  in  an 
otherwise  proper  case,  unless  the  defendant  pays  that 
royalty  within  some  reasonable  time  to  be  fixed  by  the 
court;  181  and  where  it  has  been  forfeited  by  a  forbidden 
use  of  the  patented  thing,  a  preliminary  injunction  may 
be  granted  as  to  that  use,  but  not  as  to  the  kind  of  use  au- 
thorized by  the  license.132  The  principle  of  these  prec- 
edents appears  to  be  that  a  preliminary  injunction  will 
not  be  used  to  enforce  a  forfeiture,  when  the  doings  which 
caused  the  forfeiture  can  be  otherwise  compensated.  So, 
also,  a  preliminary  injunction  will  be  refused  where  the 
defendant  had  a  license  which  he  forfeited  by  omission 
to  pay  the  royalty,  if  that  omission  was  necessitated  by 
bad  faith  on  the  part  of  the  complainant.133 

§  683.  Estoppel  is  also  a  good  defence  to  a  motion  for  a 
preliminary  injunction,  and  will  prevail  against  a  motion 
for  that  relief,  upon  the  same  facts  that  would  make  it 
prevail  in  an  action  at  law.134 

§  684.  Laches  is  a  good  defence  to  a  motion  for  a  pre- 
liminary injunction;  135  and  delay  works  laches,  unless  it 
is  excused  by  some  fact  which  renders  it  reasonable.136 
The  delay  which,  if  unexcused,  works  laches  in  respect 
of  an  application  for  a  preliminary  injunction,  is  that 

131  Woodworth  v.  Weed,  1  13S  Hockholzer  v.  Eager,  2 
Blatch.  165,  1S46;  Goodyear  v.  Sawyer,  363,  1873;  Keyes  ».  Re- 
Rubber  Co.,  3  Blatch.  455,  1856.  fining  Co.,  31  F.  R.  560,   1887; 

132  Wilson  v.  Sherman,  1  Blatch.  Brush  Electric  Co.  v.  Storage 
536,  1850.  Battery  Co.,  64  F.  R.  777,  1894; 

133  Crowell  v.  Parmeter,  3  Bann.  Empire  Cream  Separator  Co.  v. 
&  Ard.  480,  1878;  Washburn  &  Sears,  Roebuck  &  Co.,  157  F.  R. 
Moen  Mfg.  Co.  v.  Barbed  Wire  238,  1907. 

Fence  Co.,  22  F.  R.  712,  1884;  "•  Wortendyke    v.    White,     2 

Washburn  &  Moen  Mfg.  Co.  v.  Bann.  &  Ard.  26,  1875;  Green  v. 

Scutt  Co.,  22  F.  R.  710,  1884.  French,  4  Bann.  &  Ard.  169, 1879; 

'"Sections  467  to  469  of  this  Collignon  v.  Hayes,  8  F.  R.  912, 

book.  1881. 


770  INJUNCTIONS  [CHAP.    XXI, 

which  occurs  after  the  infringement  sued  upon  was  com- 
mitted,187 and  not  any  delay  which  occurred  before  that 
time.  Delay  after  the  infringement  may  occur  before 
the  suit  is  brought,  or  it  may  occur  after  that  event,  and 
before  any  motion  is  made  for  a  preliminary  injunction. 

Three  months'  delay  of  the  first  kind,  for  which  there 
was  no  particular  excuse,  and  which  caused  no  injury  to 
the  defendant,  has  been  held  not  to  constitute  laches;  138 
and  in  another  case  the  delay  of  one  year  was  likewise 
condoned.139  In  another  case,  eighteen  months',  14°  and 
in  another  two  years',  141  and  in  another  three  years',  142 
and  in  another  five  years',  143  and  in  another  six  years',  144 
delay  after  the  known  beginning  of  infringement,  and  be- 
fore the  beginning  of  a  suit,  was  held  to  constitute  such 
laches  as  must  defeat  a  motion  for  a  preliminary  injunc- 
tion ;  and  in  still  another  case  a  delay  of  two  years  by  the 
then  owners  of  the  patent,  was  held  to  preclude  their 
assignees  from  obtaining  a  preliminary  injunction.115 
Two  years'  delay  to  sue  was  excused  in  one  case  on  the 
ground  that  the  complainant  was  much  occupied  with 
other  business  during  the  time,  and  that  he  repeatedly 
notified  the  defendant  to  cease  his  infringing;  146  and  in 
another  case  a  delay  of  twenty-eight  months  was  excused 
on  the  ground  that  during  most  of  that  time  the  infringe- 

137  American  Middlings  Purifier  142  Pope  Mfg.  Co.  v.  Johnson, 
Co.  v.  Christian,  3  Bann.  &  Ard.      40  F.  R.  584,  1889. 

50,  1877.  »» Blakey  v.  Kurtz,  78  F.  R. 

138  Union   Paper-Bag   Machine     368,1897. 

Co.  v.  Binney,  5  Fisher,  167,  1871.  144  Thomson-Houston  Elec.  Co. 

139Loring  v.  Booth,  52  F.  R.  v.  Wagner  Elec.  Co.,  130  F.  R. 

151,  1892.  902,  1904. 

140  Hockholzer  v.  Eager,  2  145  Spring  v.  Machine  Co.,  4 
Sawyer,  363,  1873.  Bann.  &  Ard.  428,  1879. 

141  Sperry  v.  Ribbans,  3  Bann.  &  146  Collignon  v.  Hayes,  8  F.  R. 
Ard.  261,  1878.  912,  1881. 


CHAP.    XXI.]  INJUNCTIONS  771 

ment  was  so  small  as  to  be  harmless,  and  was  likely  to 
continue  so;  147  but  in  another  case  four  years'  delay  was 
held  to  be  too  long  to  be  excused  on  that  ground.148  The 
pendency  of  a  test  case  under  a  patent  is  also  a  good  ex- 
cuse for  delay  in  bringing  actions  against  other  infringers, 
when  those  other  infringers  interpose  the  defence  of  laches 
to  a  motion  for  a  preliminary  injunction.119 

Two  months'  unexcused  delay  after  a  suit  is  begun,  be- 
fore a  motion  for  a  preliminary  injunction  is  made,  is 
fatal  to  such  a  motion,  where  the  delay  seriously  misleads 
the  defendant;  15°  and  delay  after  a  suit  is  begun  will  con- 
stitute such  laches  as  will  defeat  an  application  for  a  pre- 
liminary injunction,  if  that  delay  continues  till  the  defend- 
ant has  closed  his  evidence  for  the  interlocutory  hearing  of 
the  case; 151  and  still  more  strongly,  when  it  continues 
till  the  case  is  about  to  be  argued  on  the  interlocutory 
hearing.152 

§  685.  Where  the  complainant  has  made  out  a  prima 
facie  case  for  a  preliminary  injunction,  and  where  the  de- 
fendant has  not  overthrown  that  case,  the  court  is  gener- 
ally bound  to  grant  such  an  injunction,153  upon  all  or  upon 

147  Accumulator  Co.  v.  Edison  Co.  v.  Mt.  Morris  Electric  Light 

Illuminating  Co.,  63  F.  R.  979,  Co.,  58  F.   R.  572,   1893;  New 

1894.  York  Filter  Mfg.  Co.  v.  Loomis- 

**  Brush  Electric  Co.  v.  Storage  Manning  Filter  Co.,  91  F.  R.  421, 

Battery  Co.,  64  F.  R.  777,  1894.  1898. 

149  Van  Hook  v.  Pendleton,   1  15°Ney  Mfg.  Co.  v.  Drill  Co., 

Blatch.     187,     1846;     Rumford  56  F.  R.  154,  1893. 

Chemical    Works    v.    Vice,     14  151Wooster  v.  Machine  Co.,  4 

Blatch.     181,     1877;    Green    v.  Bann.  &  Ard.  319,  1879. 

French,  4  Bann.  &  Ard.  169, 1879;  152  Andrews  v.  Spear,  3  Bann.  & 

Colgate  0.   Gold  &  Stock  Tele-  Ard.  80,  1877. 

graph  Co.,  4  Bann.  &  Ard.  425,  153  Gibson  v.  Van    Dresar,      1 

1879;  Edison  Electric  Light  Co.  i'.  Blatch.    535,     1850;    Sickles    v. 

Sawyer-Man  Electric  Co.,  53  F.  R.  Mitchell,    3   Blatch.    548,    1857; 

597,  1892;  Edison  Electric  Light  Sickles  v.  Tileston,  4  Blatch.  109, 


,  72  i  n.i i  \<  noNS  [chap.  xxi. 

pari  of  the  claims  of  the  patent,  according  to  the  merits 
of  the  case.164  The  effect  of  the  injunction  upon  others 
than  the  parties  to  the  suit,  cannot  commonly  be  con- 
sidered on  such  a  motion;  and  while  the  judges  fully  ap- 
preciate the  harsh  and  arbitrary  character  of  a  preliminary 
injunction  in  a  patent  case,  they  also  know  the  innumer- 
able obstacles  which  beset  a  recovery  of  damages  or  profits, 
and  that  there  is  generally  no  adequate  remedy  for  in- 
fringement pendente  lite,  other  than  a  preliminary  in- 
junction.155 

But  preliminary  injunctions  are  not  always  made  im- 
mediately operative.  Where  an  equitable  reason  for  so 
doing  is  presented  to  the  court,  such  an  injunction  may 
sometimes  be  made  to  take  effect  a  few  days,1:,(5  or  even  a 
few  months  157  in  the  future;  and  sometimes  at  graduated 
future  intervals  upon  distinct  parts  of  the  defendant's 
doings.158 

So  also,  under  some  circumstances,  the  court  can  give 
the  defendant  the  option  to  submit  to  such  an  injunction, 
or  to  give  a  bond  to  secure  any  decree  for  profits  or  dam- 
ages which  may  ultimately  be  awarded  against  him;  but 

1857;  Potter  v.  Fuller,  2  Fisher,  Whaling  Co.  v.  Alaska  Packers' 

251,    1862;   Conover  v.   Mers,   3  Ass'n,  100  F.  R. -462,  1900. 

Fisher,   386,    1868;   Ely  v.  Mfg.  154  Colt  v.  Young,  2  Blatch.  471, 

Co.,  4  Fisher,  64,  1866;  Rumford  1852;  Potter  v.  Holland,  1  Fisher, 

Chemical    Works    v.    Vice,     14  382,1858. 

Blatch.  181,  1877;  American  Mid-  155  Carter  v.  Wollschlaeger,  53 

dlings  Purifier  Co.  v.  Christian,  F.  R.  576,  1892. 

3  Bann.  &  Ard.  54,  1857;  Green  v.  158  Fuller  v.  Gilmore,  121  F.  R. 

French,  4  Bann.  &  Ard.  169,  1879;  129,  1902. 

New   York    Filter    Mfg.    Co.    v.  I57  American  Sulphite  Pulp  Co. 

Niagara  Falls  Water  Works  Co.,  v.  Burgess  Sulphite  Fibre  Co.,  103 

77  F.  R.  900,  1896;  Allington  &  F.  R.  982,  1900. 

Curtis    Mfg.    Co.    v.    Booth,    78  158  Westinghouse  Air-Brake  Co. 

F.  R.  878,   1897;  Pacific  Steam  v.  Great  Northern  Ry.   Co.,  86 

F.  R.  132,  1898. 


CHAP.    XXI. |  INJUNCTIONS  773 

a  bond  can  be  required  only  in  a  case  where  an  injunction 
must  issue  if  the  bond  is  not  given.169  The  circumstances 
under  which  it  is  proper  to  give  the  defendant  that  option 
include  the  following: 

§  686.  Bonds  may  be  taken,  instead  of  preliminary  in- 
junctions being  imposed,  if  the  complainant  habitually 
avails  himself  of  his  exclusive  right  by  receiving  royalties 
for  licenses,  rather  than  by  making  and  selling,  or  making 
and  using  the  patented  article  himself,  while  permitting  no 
other  to  do  so;  160  but  this  course  of  business  of  the  com- 
plainant is  not  otherwise  a  defence  to  a  motion  for  a  pre- 
liminary injunction.161  And  where  the  complainant  is 
able  and  willing  to  supply  the  market  for  that  article, 
the  fact  that  the  defendant  is  willing  to  take  a  license, 
and  able  to  pay  for  one,  does  not  entitle  him  to  the  option 
of  giving  bonds,  if  the  complainant  declines  to  give  him  a 
license.162  The  measure  of  the  amount  of  the  bond  is  the 
approximate  amount  of  profits  which  the  defendant  will 
make  from  the  time  when  the  order  is  made  to  the  termi- 
nation of  the  cause.163 

§  687.  So,  also,  a  defendant  may  sometimes  be  entitled 
to  the  option  of  giving  bonds  instead  of  being  enjoined, 

159Forbush     v.     Bradford,      1  American  Grape  Sugar  Co.,    10 

Fisher,  317,  1858;  American  Mid-  F.    R.    837,    1882;    McMillan   v. 

dlings    Purifier    Co.    v.    Atlantic  Conrad,    16    F.    R.    128,    1883; 

Milling  Co.,  3  Bann.  &  Ard.  173,  Eastern  Paper  Bag  Co.  v.  Nixon, 

1877.  35  F.   R.   752,    1888;   Palmer  v. 

180  Howe  v.  Morton,   1  Fisher,  Mills,  57  F.  R.  222,  1893. 

601,  1860;  Hodge  v.  Railroad  Co.,  161  Kennedy   v.   Penn.    Iron    & 

6  Blatch.  166,  1868;  Dorsey  Har-  Coal  Co.,  67  F.  R.  340,  1895. 

vester    Rake    Co.    v.    Marsh,    6  182  Baldwin  v.  Bernard,  5  Fisher, 

Fisher,  387,  1873;  Colgate  v.  Gold  447,     1872;    Westinghouse    Air- 

&  Stock  Telegraph  Co.,  16  Blatch.  Brake  Co.  v.  Carpenter,  32  F.  R. 

503,  1879;  Kirby  Bung  Mfg.  Co.  545,  1887. 

r.  White,  1  McCrary,  155,  1880;  18S  Karfiol  v.  Rothner,  151  F.  R. 

New  York  Grape  Sugar  Co.  v.  779,  1907. 


771  INJUNCTIONS  [CHAP.    XXI. 

where  his  infringing  machinery  contains  costly  parts  which 
are  not  covered  by  the  complainant's  patent;101  bul  he 

is  not  thus  entitled  in  all  such  cases.""  And  a  defendant 
may  be  entitled  to  that  option  where  the  infringing  article 
was  purchased  in  good  faith,  having  been  const  meted  in 
conformity  to  a  junior  patent;166  or  where  it  was  so  con- 
structed by  the  defendant  himself;  or  where  the  defendant 
is  only  a  seller,107  or  only  a  user,168  of  specimens  of  the 
patented  article,  a  suit  being  pending  against  the  manu- 
facturer from  whom  he  received  those  specimens;  or  where 
the  prior  adjudication,  upon  which  the  right  to  a  prelimi- 
nary injunction  is  based,  has  been  appealed  to  a  higher 
court,  and  is  still  pending  there;  169  or  where  new  evidence 
is  to  be  taken  for  the  interlocutory  hearing; 170  or  where 
the  patent  in  suit  will  soon  expire; 171  or  where  the  injunc- 
tion, if  granted,  would  be  very  damaging  to  the  interests 
of  the  defendant,  and  not  particularly  beneficial  to  the 
legitimate  rights  of  the  complainant;  172  or  where  public 

184  Howe  v.  Morton,  1  Fisher,  170  Norton    v.    Automatic   Can 

587,  1860;  Stainthorp  v.  Humis-  Co.,  61  F.  R.  296,  1894. 

ton,  2  Fisher,  311,   1862;  Eagle  m  National  Cash-Register  Co. 

Mfg.  Co.  v.  Plow  Co.,  36  F.  R.  v.  Navy  Cash-Register  Co.,   99 

907,  1888.  F.  R.  565,  1900. 

165  Edison  Electric  Light  Co.  v.  172  Morris  v.  Mfg.  Co.,  3  Fisher, 
Sawyer-Man  Electric  Co.,  53  68,  1866;  Morris  v.  Shelbourne,  4 
F.  R.  597,  1892.  Fisher,  377,   1871;  Dorsey  Har- 

166  United  States  Annunciator  vester  Rake  Co.  v.  Marsh,  6 
Co.  v.  Sanderson,  3  Blatch.  184,  Fisher,  387,  1873;  Kirby  Bung 
1854.  Mfg.  Co.  v.  White,  1  McCrary, 

167  Irwin  v.  McRoberts,  4  Bann.  155,  1880;  Hoe  v.  Boston  Daily 
&  Ard.  414,  1879.  Advertiser,  14  F.  R.  914,  1883; 

168  Westinghouse  Air-Brake  Co.  Consolidated  Roller  Mill  Co.  v. 
v.  Burton  Stock-Car  Co.,  77  F.  R.  Richmond  MiU  Works,  40  F.  R. 
301, 1896.  474,  1889;  Edison  Electric  Light 

169  Wells  v.  Gill,  6  Fisher,  93,  Co.  v.  Mt.  Morris  Electric  Light 
1872.  Co.,  58  F.  R.  575,  1893;  Duplex 


CHAP.    XXI.]  INJUNCTIONS  775 

policy  forbids  a  discontinuance  of  the  defendant's  use  of 
the  patented  invention ;  173  or  where  the  complainant  does 
not  himself  employ  the  invention;  171  or  where,  for  any 
reason,  a  preliminary  injunction  would  operate  unjustly.175 
It  is  no  part  of  the  legitimate  office  of  a  preliminary  in- 
junction to  force  the  defendant  to  compromise  a  dis- 
puted claim, 176  not  to  compel  him  to  give  the  complainant 
a  contract  to  purchase  specimens  of  the  patented  thing. 177 
But  in  the  absence  of  every  special  reason  for  giving  the 
defendant  the  option  of  giving  bonds,  instead  of  submit- 
ting to  an  injunction,  that  option  cannot  be  demanded 
by  him,178  nor  ought  it  to  be  granted  by  the  court.179 
Where  the  defendant  is  entitled  to  the  option  of  giving 
bonds  or  being  enjoined,  and  chooses  the  former  alterna- 
tive, but  is  unable  to  furnish  the  bonds  promptly,  an 
injunction  may  issue  against  him,  coupled  with  an  order 
for  its  dissolution  whenever  the  proper  bonds  are  approved 
and  filed.180 

Printing-Press   Co.   v.   Campbell  m  American     Nicolson     Pave- 

Printing-Press  Co.,  69  F.  R.  256,  ment  Co.  v.  Elizabeth,  4  Fisher, 

1895;    Huntington    Dry-Pulver-  197,  1870. 

izer  Co.  v.  Alpha  Portland  Cement  178  Consolidated   Fruit-Jar   Co. 

Co.,  91  F.  R.  534, 1899;  Aquarama  v.  Whitney,  1  Bann.  &  Ard.  361, 

Co.  v.  Old  Mill  Co.,  124  F.  R.  233,  1874. 

1903.  "9  Gibson    v.    Van    Dresar,    1 

173  Guidet  v.  Palmer,  10  Blatch.  Blatch.     532,     1850;     Tracy    v. 
220,  1872.  Torrey,    2    Blatch.    275,    1851 ; 

174  Hoe  v.  Knap,  27  F.  R.  212,  Tilghman  v.  Mitchell,  4  Fisher, 
1886.  615,  1871;  McWilliams  Mfg.  Co. 

175  Union  Paper  Bag  Machine  v.  Blundell,  11  F.  R.  419,  1882. 
Co.  ».  Binney,  5  Fisher,  169,  1871;  18°  Brooks  v.  Bicknell,   3   Mc- 
National  Cable  Ry.  Co.  v.  Sioux  Lean,  250,  1843;  Foster  v.  Moore, 
City  Cable  Ry.  Co.,  42  F.  R.  685,  1    Curtis,    279,    1852;    Howe    v. 
1890.  Morton,    1    Fisher,    586,    1860; 

178  Morris  v.  Mfg.  Co.,  3  Fisher,      Stainthorp  v.  Humiston,  2  Fisher, 
70,  1866.  Ml,    1862;    Goodyear    v.    Hills, 


776  INJl  NOTIONS  [chap.   XXI. 

§688.  Formerly  it  whs  entirely  ill  the  discretion  of  the 
court  as  to  whether  or  not  :t  bond  should  be  required  of 
the  plaintiff  us  a  condil  ion  to  the  issuance  of  a  preliminary 

injunction. ,sl  Such  bonds  were  conditioned  on  the  ulti- 
mate success  of  the  plaintiff  in  sustaining  his  claim,  and 
might  be  required  in  cases  where  the  injunction  if  granted 

would  cause  serious  injury  to  the  defendant.182  By  Sec- 
tion 18  of  the  Clayton  Act182"  it  was  provided  that  "no 
restraining  order  or  interlocutory  order  of  injunction  shall 
issue  except  upon  the  giving  of  security  by  the  applicant 
in  such  sum  as  the  court  or  judge  may  deem  proper  con- 
ditioned upon  the  payment  of  such  costs  or  damages  as  may 
be  incurred  or  suffered  by  any  party  who  may  be  found 
to  have  been  wrongfully  enjoined  or  restrained  thereby." 
§  689.  A  preliminary  injunction  cannot  be  averted  on 
the  sole  ground  that  an  action  at  law  for  the  damages  to  be 
caused  by  the  infringement  would  be  a  plain,  adequate  and 
complete  remedy  therefor.183  It  many  cases  that  would 
not  be  true,  and  the  court  cannot  determine  on  affidavits 
whether  it  would  be  true  in  a  particular  case  or  not.  A 
motion  for  a  preliminary  injunction  is  not  to  be  defeated 
on  a  possibility  that  the  complainant  might  be  able  to 
obtain  damages  for  the  wrong  which  he  seeks  to  prevent.184 

3    Fisher,    134,    1866;    Sykes    v.  bury  &  Minot,  20,  1845;  Brammer 

Manhattan  Co.,   6  Blatch.   496,  r.    Jones,    3    Fisher,    340,    1867; 

1869;  Gilbert  &  Barker  Mfg.  Co.  Shelly  v.  Brannan,  4  Fisher,  198, 

v.  Bussing,  12  Blatch.  426,  1875.  1870;  Consolidated  Fruit-Jar  Co. 

1,1  Tobey     Furniture     Co.     v.  v.  Whitney,  1  Bann.  &  Ard.  361, 

Colby,  35  F.  R.  594,  1888;  Brush  1874. 

Electric  Co.  v.  Accumulator  Co.,  182°  Act  of  October    15,    1914, 

50  F.  R.  833,  1892;  Accumulator  Chap.  323,  38  Stat.  730. 

Co.  v.  Storage  Co.,  53  F.  R.  800,  183  General  Electric  Co.  v.  Wise, 

1893;  Columbia  Wire  Co.  v.  Free-  119  F.  R.  924,  1903. 

man  Wire  Co.,  71  F.  R.  302,  1895.  184  Allington  &  Curtis  Mfg.  Co. 

«*  Or  v.  Littlefield,   1  Wood-  v.  Booth,  78  F.  R.  879,  1897. 


CHAP.    XXI.]  INJUNCTIONS  777 

But  even  where  it  is  plain  thai  the  damages  recoverable 
in  an  action  at  law  would  he  as  beneficial  to  the  complain- 
ant as  an  injunction  would  be,  that  fact  does  not  oust  the 
right  of  the  complainant  to  the  latter  relief.  The  case  is 
analogous  to  actions  in  equity  for  the  specific  performance 
of  contracts  to  sell  real  property.  The  bills  in  such  cases 
seldom  show,  and  never  are  required  to  show,  that  an  ac- 
tion at  law  for  damages  would  not  be  a  plain,  adequate, 
and  complete  remedy  for  the  failure  to  perform.  "  Ordi- 
narily a  vendor,  in  the  recovery  of  pecuniary  damages,  has 
an  adequate  remedy  at  law,  but  he  has  a  choice  of  reme- 
dies. He  may  resort  either  to  a  court  of  law  or  a  court  of 
equity."185  Bills  for  preliminary  injunctions  in  patent 
cases  are  never  obnoxious  to  Section  267  of  the  Judicial 
Code,  because  the  word  "case"  in  that  section  is  to  be  in- 
terpreted specifically  and  not  generically.  "  Suits  in 
equity  shall  not  be  sustained  in  either  of  the  courts  of  the 
United  States  in  any  case  where  a  plain,  adequate  and 
complete  remedy  may  be  had  at  law."18fi  This  statute 
regards  an  action  in  equity  to  restrain  infringement  of 
a  patent,  as  a  case  for  an  injunction,  and  not  merely  as  a 
patent  case.  It  therefore  opposes  no  obstacle  to  the 
jurisdiction  of  equity  in  such  a  case. 

§  690.  Where  the  defendant  withdraws  his  opposition 
to  a  motion  for  a  preliminary  injunction  before  the  motion 
is  decided,  the  injunction  may  be  granted  by  consent; 
but  the  court  will  decline  to  render  a  decision.187  That  is 
to  say:  a  consent  decree  will  be  entered  as  a  consent  de- 
cree, and  not  as  one  based  on  a  conclusion  of  the  judicial 
mind.    If  this  rule  were  otherwise,  parties  between  whom 

185  Crary  v.  Smith,  2  Comstock  723,  re-enacted  in  Judicial  Code, 
(N.  Y.),  62,  1848.  Section  267. 

186  Revised     Statutes,     Section  187  American  Middlings  Purifier 

Co.  v.  Vail,  15  Blatch.  315,  1878. 


778  I  x.i  l  NOTIONS  [chap.    XXI. 

there  continued  to  be  no  real  contest,  might  manage  to 
secure  decisions  from  courts  which  would  operate  to  their 
mutual  advantage,  and  to  the  serious  disadvantage  of 

strangers  to  the  litigation. 

§691.  The  discretion  of  the  court  was  said  in  some  of 
the  earlier  cases  to  be  the  criterion  of  judgment  when  de- 
ciding motions  for  preliminary  injunctions  in  patent  cases. 
The  doctrine  was  a  necessity  in  the  beginning  of  the  evolu- 
tion of  the  patent  laws,  because  the  judges  could  then  find 
but  few  precedents  to  guide  or  to  warn.  At  present  the 
fact  is  otherwise.  Approved  precedents  can  now  be  found 
on  nearly  every  point  that  can  arise.187" 

§  G92.  A  motion  to  dissolve  a  preliminary  injunction  may 
be  made  at  any  time,18S  upon  reasonable  notice  to  the  com- 
plainant's solicitor;  1S!)  and  it  will  be  promptly  granted 
where  the  judge  becomes  convinced  that  the  granting  of 
the  injunction  was  erroneous  in  point  of  law,190  or  where 
the  defendant  positively  proves  any  fact  which  would  have 
been  fatal  to  the  motion  for  the  preliminary  injunction, 
if  presented  at  the  time  that  motion  was  heard,  and  shows 
that  the  evidence  could  not  with  reasonable  diligence 
have  been  presented  at  that  hearing.191    So,  also,  a  dis- 

18?a  See   Section   696a;   Irving-  Waters,  4  Cranch's  Circuit  Court 

Pitt  Mfg.  Co.  v.  Twinlock  Co.,  Reports,  577,  1835. 

220  F.  R.  325,  1914.  m  Steam  Gauge  &  Lantern  Co. 

188  Minturn  v.  Seymour,  4  John-  v.  Miller,  11  F.  R.  719,  1882. 
son's  Chancery  (N.Y.),  173, 1819;  m  Woodworth  v.  Rogers,  3 
Cammack  v.  Johnson,  2  New  Jer-  Woodbury  &  Minot,  135,  1847; 
sey  Equity,  163,  1839;  Jones  v.  Hussey  v.  Whiteley,  2  Fisher, 
Bank,  5  How.  (Miss.)  43,  1840;  125,  1860;  Young  v.  Lippman, 
Timolat  v.  Philadelphia  Pneu-  5  Fisher,  230,  1872;  Carey  v. 
matic  Tool  Co.,  123  F.  R.  899,  Spring  Bed  Co.,  26  F.  R.  38, 
1903.  1886;  Huntington  v.  Heel  Plate 

189  Wilkins  v.  Jordan,  3  Wash-  Co.,  33  F.  R.  838,  1888;  Electrical 
ington,    226,    1813;    Caldwell    v.  Accumulator  Co.  v.  Julien  Electric 

Co.,  47  F.  R.  892,  1891. 


CHAP.    XXI. |  INJUNCTIONS  7/l.l 

solution  of  a  preliminary  injunction  may  be  based  on  a 
fact  which  arose  after  the  injunction  was  granted:  for 
example,  on  the  fact  that  the  complainant,  after  that 
event,  assigned  all  his  interest  in  the  future  duration  of 
the  patent  to  another;  ,92  or  on  the  fact  that  he  omitted 
to  prosecute  his  case  toward  an  interlocutory  hearing  with 
the  speed  which  the  rules  of  court  require;  193  or  on  the 
fact  that  the  complainant  advertised  the  injunction  falsely 
for  effect  upon  strangers  to  the  suit ;  194  or  on  the  fact  that 
the  prior  adjudication,  upon  which  the  injunction  was 
based,  has  been  reversed  on  an  appeal.195 

§  693.  A  motion  to  dissolve  an  injunction  for  error  in 
point  of  law,  must  be  based  on  a  point  which  was  estab- 
lished after  the  injunction  was  granted,  or  which  was 
obviously  overlooked  or  misweighed  by  the  judge  at  that 
time.  It  would  be  unprofessional  as  well  as  unavailing 
for  counsel  to  move  a  dissolution,  on  the  ground  that  the 
judge  wrongly  reasoned  out  his  conclusion  from  the  prem- 
ises from  which  he  proceeded.  Courts  ought  not  to  be 
asked  to  change  their  judgments  on  points  of  law,  unless 
the  law  has  changed  or  been  newly  formulated  in  the  mean- 
time, or  unless  some  special  error  can  be  pointed  out. 
Few  things  are  more  trying  to  the  patience  of  judges,  or 
more  useless  to  the  interests  of  clients,  than  the  repetition 
of  old  and  well-understood  arguments. 

§  694.  A  motion  to  dissolve  an  injunction  on  account  of 
newly  discovered  facts,  requires  the  mover  to  assume  the 
burden  of  establishing  those  facts;  because  when  an  in- 

192  Parkhurst  v.  Kinsman,  1  v.  Chicago  Hotel  Cabinet  Co.,  89 
Blatch.  489,  1849;  Edison  Elec-      F.  R.  311,  1898. 

trie  Light  Co.  v.  Buckeye  Electric  194  Consolidated  Fastener  Co.  v. 
Co.,  59  F.  R.  699,  1894.  Toppen,  113  F.  R.  697,  1901. 

193  Robinson    v.    Randolph,    4  See  Section  705. 

Bann.  &  Ard.  318,  1879;  Antisdel  195  Prieth  v.  Campbell  Printing- 

Press  Co.,  80  F.  R.  539,  1897. 


780  INJUNCTIONS  [CHAP.    XXI. 

junction  is  once  grunted,  it  is  presumed  to  have  beer 
granted  rightfully,  until  the  contrary  is  made  to  appear.196 

Affidavits  and  other  evidence  to  disprove  the  statements 
of  fact,  contained  in  the  moving  papers  of  the  defendant, 
may  be  introduced  by  the  complainant;  and  counter  evi- 
dence from  the  defendant  is  then  admissible  to  disprove 
the  complainant's  answering  allegations.  After  this,  it 
becomes  the  duty  of  the  judge  to  balance  the  documents 
and  ascertain  where  the  weight  of  them  is;  ]97  and  he  will 
decide  the  motion  against  the  mover,  unless  his  papers 
preponderate.198  Service  on  the  opposite  party,  before 
the  motion  is  heard,  of  the  affidavits  upon  which  a  motion 
to  dissolve  an  injunction  is  made  or  is  resisted,  seems  to 
be  called  for  by  the  same  reasons  which  call  for  similar 
service  of  the  affidavits  upon  which  motions  for  prelimi- 
nary injunctions  are  based  or  are  withstood.199 

§  695.  A  motion  to  reinstate  a  dissolved  injunction 
may  be  made  at  any  time;  but  it  will  not  be  granted  on 
the  same  state  of  the  case  as  that  which  existed  when  the 
injunction  was  dissolved.  So,  also,  a  reinstated  prelimi- 
nary injunction  may  be  again  dissolved  on  any  new  state 
of  facts  which  show  that  its  continuation  would  be  un- 
just.200 In  patent  cases,  however,  it  will  seldom  occur 
that  the  alternate  process  of  issuing  and  dissolving  pre- 
liminary injunctions  can  be  carried  further  than  the  first 
dissolution.  After  that,  the  court  will  let  the  matter 
rest  till  the  interlocutory  hearing,  unless  a  case  of  great 
clearness  and  pressing  necessity  is  presented  for  further 
preliminary  action. 

196  Woodworth  v.  Rogers,  3  198  Sparkman  v.  Higgins,  1 
Woodbury  &  Minot,  143,  1847.  Blatch.  207,  1849. 

197  Woodworth    v.     Rogers,    3  199  Section  662  of  this  book. 
Woodbury       &       Minot,       144,  200  Tucker     v.     Carpenter,      1 
1847.  Hempstead,  441,  1841. 


CHAP.    XXI. J  INJUNCTIONS  7<S  I 

§  696.  While  an  injunction  is  in  force,  it  must  be  obeyed, 
even  though  it  ought  never  to  have  been  granted.201 
But  an  injunction  is  not  in  force  if  it  was  issued  against 
a  defendant  over  whom  the  court  had  no  jurisdiction. 
No  court  has  any  authority  to  issue  an  injunction  against 
such  a  person.  And  where  courts  act  without  authority, 
their  orders  are  nullities.  They  are  not  voidable,  but 
simply  void.202  It  does  not  follow,  however,  that,  if  a 
Federal  court  were  to  issue  an  injunction  against  a  de- 
fendant before  he  is  served  with  a  subpoena  ad  responden- 
dum in  the  case,  that  injunction  would  be  void  and  could 
safely  be  disregarded  since  the  court  acquires  jurisdiction 
if  the  subpoena  is  served  within  a  reasonable  time  there- 
after; 203  and  so  where  an  injunction  is  granted  after  such 
service,  and  upon  due  notice  of  the  motion  therefor,  it 
must  be  obeyed,  no  matter  how  obviously  unjust  and  un- 
warrantable its  granting  may  have  been. 

An  injunction  is  binding  upon  all  persons  who  were 
connected  with  the  defendant  in  defending  against  the 
suit,  before  the  injunction  was  issued,  and  who  were  also 
connected  with  the  defendant  in  disobeying  that  injunc- 
tion, after  being  informed  of  its  issue;  though  they  were 
not  themselves  defendants  to  the  suit  nor  served  with  the 
injunction  writ.204    But  a  mere  order  for  an  injunction, 

201  Moat  v.  Holbein,  2  Edwards'  340,  1828;  Wilcox  v.  Jackson,  13 

Chancery    (N.    Y.),    188,    1834;  Peters,  511,  1839. 

Sullivan  a.  Judah,  4  Paige  (N.  Y.),  -03  Universal  Savings,  etc.,  Co. 

444,   1834;  Richards  v.  West,  2  v.   Stoneburger,    113   F.   R.   251, 

Green's  Chancery  (N.  Y.),  456,  1902;   Horn   v.    Pere   Marquette 

1836;    People    v.    Sturtevant,    5  R.  Co.,  151  F.  R.  626,  1907. 

Selden  (N.  Y.),  263,  1853;  Erie  ™Inre  Lennon,  166  U.  S.  548, 

Railway  Co.  v.  Ramsay,  45  New  1897;  Phillips  v.  Detroit,  3  Bann. 

York,  637,  1871.  &  Ard.  150,  1877;  Stahl  v.  Ertel, 

-'»2  Elliot   v.    Peirsol,    1   Peters,  62  F.  R.  922,  1893;  United  States 


7S2  INJUNCTIONS  [CHAP.    XXI. 

upon  which  no  writ  of  injunction  is  ever  issued,  is  not  bind- 
ing upon  anybody.205  Though  a  writ  of  injunction  when 
il  is  served,  may  retroact  to  cover  disobedient  doings, 
which  occurred  after  the  doer  learned  that  an  order  for 
thai  writ  had  been  made,  and  before  the  writ  could  be 
drawn  up,  and  be  executed,  and  be  issued,  and  be  served 
upon  the  defendant. 

Section  19  of  the  Clayton  Law  in  effect  October  15, 
1914,  has  not  apparently  changed  the  rules  of  law  determin- 
ing the  persons  who  are  bound  by  an  injunction,  but  it  is 
advisable  to  consult  the  section  whenever  the  question 
arises  in  a  specific  case.206 

When  an  injunction  is  dissolved  which  ought  not  to 
have  been  granted,  the  enjoined  party  is  without  redress 
for  the  injury  or  inconvenience  he  may  have  suffered, 
unless  the  court,  when  granting  the  injunction,  made  an 
order  that  the  complainant  should  pay  the  defendant  such 
resulting  damages  as  he  might  sustain,  in  case  it  be  finally 
decided  that  the  injunction  ought  not  to  have  been 
granted;  or  required  the  complainant  to  file  a  bond  to  se- 
cure those  damages,  as  a  condition  precedent  to  the  issuing 
of  the  injunction.207 

§  696a.  An  appeal  is  demandable  to  the  Circuit  Court  of 
Appeals,  from  any  order  of  a  District  Court  which  grants, 
continues,  refuses  or  dissolves  an  interlocutory  order  or 
decree  or  refuses  to  dissolve  an  injunction  at  any  time 
within  thirty  days  from  the  entry  of  such  order.  In  the 
sense  of  the  statute  allowing  such  appeals,  a  "hearing  in 

Playing-Card  Co.  v.  Spalding,  92  See  Section  407. 

F.  R.  368,  1899.  207  Lexington  &  Ohio  Railroad 

205  McCormick  v.  Jerome,  3  Co.  v.  Applegate,  8  Dana  (Ken.), 
Blatch.  486,  1856;  Whipple  v.  289,  1839;  Sturgis  v.  Knapp,  33 
Hutchinson,  4  Blatch.  191,  1858.  Vermont,  486,   1860;   McKay  v. 

206  Act  of  October  15,  1914,  Jackman,  16  Reporter,  164,  1883. 
chap.  323,  38  Stat.  730.  See  Section  688. 


CHAP.    XXI.]  INJUNCTIONS  783 

equity  "  does  not  have  its  usual  meaning  of  a  final  hearing 
on  the  merits  but  means  merely  the  presentation  and  sub- 
mission of  the  motion  for  the  order,208  and  such  appeals 
take  precedence  in  the  appellate  court;  but  they  do  not 
stay  the  other  proceedings  in  the  case  in  the  court  below 
during  the  pendency  of  the  appeal  unless  the  court  or  the 
appellate  court  or  one  of  the  judges  of  the  latter  so 
orders.209  Nor  does  such  an  appeal  give  the  appellant  a 
right  to  a  supersedeas  of  the  injunction  pending  the  appeal ; 
and  the  suspension  of  the  injunction  during  that  time, 
may  be  granted  or  refused  at  his  discretion,  by  any  judge 
of  the  court  which  granted  the  injunction.210 

The  decision  of  an  appeal  from  an  order  granting  a 
preliminary  injunction,  primarily  depends  upon  the  ques- 
tion of  the  providence  of  the  injunction;  2U  and  that 
question  may  or  may  not  depend,  according  to  circum- 
stances, upon  the  ultimate  merits  of  the  case.212  In  de- 
ciding the  question  of  the  providence  of  the  injunction, 
the  adjudication  or  acquiescence  upon  which  the  injunc- 
tion was  based  in  the  court  below  will  generally  have  the 
same  strength  in  the  Circuit  Court  of  Appeals  that  it 
ought  to  have  had  in  the  court  below; 213  and  in  general 

208  American  Grain  Separator  Mfg.  Co.  v.  American  Wellworks, 
Co.  v.  Twin  City  Separator  Co.,      121  F.  R.  77,  1902. 

202  F.  R.  202,  1912.  212  Blount  v.  Societe,  53  F.  R. 

209  Judicial  Code,  Section  129.  98,    1892;   Consolidated   Electric 

210  In  re  Haberman  Mfg.  Co.,  Storage  Co.  v.  Accumulator  Co., 
147  U.  S.  529,  1893.  55  F.   R.  485,    1893;  Thomson- 

211  Southern  Pacific  Co.  v.  Earl,  Houston  Electric  Co.  v.  Ohio  Brass 
82  F.  R.  690,  1897;  Pacific  Steam  Co.,  80  F.  R.  730,  1897;  American 
Whaling  Co.  v.  Alaska  Packers'  Fur  Refining  Co.  v.  Cimiotti  Un- 
Ass'n,  100  F.  R.  462,  1900;  Wels-  hairing  Co.,  118  F.  R.  838,  1902. 
bach  Light  Co.  v.  Cosmopolitan  213  American  Paper  Pail  Co.  v. 
Light  Co.,  104  F.  R.  85,  1900;  National  Folding  Box  Co.,  51 
Stearns-Roger  Mfg.  Co.  v.  Brown,  F.  R.  232,  1892;  Duplex  Printing- 
114  F.  R.  939,  1902;  F.  C.  Austin  Press  Co.  v.  Campbell  Printing- 


78 1 


INJUNCTIONS 


[CHAP.    XXI. 


it  may  be  stated  thai  the  appellate  court  will  not  reverse 
an  order  granting  a  preliminary  injunction  unless  it  clearly 
appears  that  the  court  below  has  exercised  its  discretion 
upon  a  wholly  wrong  comprehension  of  the  facts  or  law 
of  the  case; zu  but  where  it  was  plainly  wrong  or  insuf- 
ficient, it  will  not  be  followed.215 

Such  is  the  case  where  the  court  below  has  failed  to 
apply  well-settled  principles  of  law  which  if  applied  woulti 
have  compelled  a  contrary  decision.21"  It  has  been  an- 
nounced as  a  principle  of  law  in  the  ninth  circuit  that, 
when  the  validity  of  the  patent  has  been  sustained  in  an 
action  at  law  and  infringement  is  clear,  a  court  of  equity 
has  no  discretion  to  refuse  a  preliminary  injunction  in  the 
absence  of  further  showing  by  the  defendant.217 

And  an  appeal  from  a  preliminary  injunction  will  be 
dismissed  without  adjudication,  in  the  Circuit  Court  of 


Press  Co.,  69  F.  R.  255,   1895; 

Thomson-Houston  Electric  Co.  /'. 
Ohio  Brass  Co.,  80  F.  R.  730, 
1897;  Consolidated  Fastener  Co. 
v.  Littauer,  84  F.  R.  164,  1897; 
Societe  Anonyme  v.  Allen,  90 
F.  R.  815,  1898;  Consolidated 
Fastener  Co.  v.  Hays,  100  F.  R. 
984,  1900. 

214  Interurban  Ry.  &  Terminal 
Co.  v.  Westinghouse  Electric  & 
Mfg.  Co.,  186  F.  R.  166,  1911; 
Kryptok  Co.  v.  Stead  Lens  Co., 
190  F.  R,  767,  1911;  City  of 
Grand  Rapids  v.  Warren  Bros. 
Co.,  196  F.  R.  892,  1912;  Amer- 
ican Grain  Separator  Co.  v.  Twin 
City  Separator  Co.  (discussing 
the  subject),  202  F.  R.  202,  1912; 
Fireball  Gas  Tank,  etc.,  Co.  v. 
Commercial   Acetylene   Co.,    19S 


F.  R.  650,  1912;  (affirmed  with 
opinion  239  U.  S.  156);  Crescent, 
Specialty  Co.  v.  National  Fire- 
works Distributing  Co.  (announc- 
ing the  rule  in  the  sixth  circuit), 
219  F.  R,  130,  1915  Lion  Tractor 
Co.  v.  Bull  Tractor  Co.  (eighth 
circuit),  231  F.  R.  156,  1916. 

216  Curtis  v.  Overman  Wheel 
Co.,  58  F.  R.  784,  1893;  Thomson- 
Houston  Electric  Co.  v.  Hoosick 
Ry.  Co.,  82  F.  R.  461,  1897; 
Rubens  v.  Wheatfield,  93  F.  R. 
681,  1899. 

sis  Winchester  Repeating  Arms 
Co.  v.  Olmstead,  203  F.  R.  493, 
1913. 

2,7  Sherman-Clay  &  Co.  v. 
Searchlight  Horn  Co.,  214  F.  R. 
99,  1914. 


(HAP.    XXI.]  INJUNCTIONS  785 

Appeals,  when  the  patent  has  expired  since  the  injunction 
was  granted,  because  the  injunction  will  have  terminated 
at  the  same  time.218  In  case  the  order  in  the  court  below 
has  required  the  defendant  in  the  alternative  to  give  a 
bond  or  be  enjoined,  and  the  defendant  has  given  the  bond, 
the  order  will  not  usually  be  reviewed  on  the  merits.219 

The  Circuit  Court  of  Appeals,  on  an  appeal  from  an 
order  granting  a  preliminary  injunction,  may  not  only 
reverse  that  order,  but  may  also  direct  the  court  below 
to  dismiss  the  bill  of  complaint.220  But  that  direction  will 
be  given  only  where  the  facts  before  the  Circuit  Court  of 
Appeals,  conclusively  show  that  further  litigation  cannot 
ultimately  result  otherwise  than  in  such  a  dismissal.221 

§  697.  A  permanent  injunction  follows  a  decision  in 
favor  of  the  complainant,  on  the  interlocutory  hearing 
of  a  patent  case,  unless  some  special  reason  exists  for  its 
being  refused,  or  being  postponed  till  after  the  master's 
report,  or  being  suspended  pending  an  appeal.222 

§  698.  A  refusal  of  a  permanent  injunction  will  gener- 
ally follow  from  the  fact  that  the  patent  has  expired  at  the 
time  of  the  interlocutory  decree.223  If  there  is  an  excep- 
tion to  this  rule,  it  is  only  where  the  defendant  may  be 
enjoined  from  using  or  selling,  after  the  expiration  of  the 

2>sGamewell    Fire-Alarm    Tel-  Hallock,    128   F.    R.   596,    1904; 

egraph  Co.  v.   Municipal  Signal  National  Electric  Signaling  Co.  v. 

Co.,  61  F.  R.  208,  1894;  National  Telefunken    Wireless    Telegraph 

Folding-Box    &    Paper    Co.     v.  Co.,  200  F.  R.  591,  1912. 
Robertson,      104     F.     R.     552,  222  Potter   v.    Mack,   3   Fisher, 

1900.  430,    1868;    Rumford    Chemical 

219  United  Blue-Flame  Co.  v.  Works  v.  Hecker,  2  Bann.  & 
Silver  &  Co.,  128  F.  R.  925,  1904.  Ard.  388,   1876;  Bissell  Carpet- 

220  Mast,  Foos  &  Co.  v.  Stover  Sweeper  Co.  v.  Goshen  Sweeper 
Mfg.  Co.,  177  U.  S.  495,  1900.  Co.,  72  F.  R,  551,  1896. 

221  Brill  v.  Peckham  Motor  223  Jordan  v.  Dobson,  2  Abbott's 
Truck  Co.,  189  U.  S.  63,  1903;  U.  S.  Reports,  415,  1870;  Bignall 
Co-Operating  Merchants'  Co.   v.  v.  Harvey,  IS  Blatch.  356,  1880. 


786  INJUNCTIONS  [chap.    XXI. 

patent,  those  specimens  of  the  patented  thing  which  he 

unlawfully  made   before   thai    expiration.224      But   Justice 

Miller  once  decided  that  there  is  no  such  exception; 
because  such  an  exception  would  practically  prolong 
many  patents  beyond  the  statutory  term  thereof;  and 
because  damages  are  a  sufficient  remedy  for  such  unlawful 
making.228  And  certainly  no  injunction  will  issue  to 
prevent  preparation,  during  the  life  of  a  patent,  for  mak- 
ing, selling,  or  using  the  patented  matter  after  the  patent 
expires.226 

§  699.  A  refusal  of  a  permanent  injunction  will  also 
occur  where  the  complainant  is  shown  to  have  assigned, 
prior  to  the  interlocutory  decree,  all  his  interest  in  the 
future  duration  of  the  patent  right  infringed  by  the  de- 
fendant.227 But  no  such  refusal  will  be  based  on  the  fact 
that  the  complainant  is  not  employing  his  invention  in 
competition  with  the  defendant,228  or  upon  the  fact  that 
the  defendant  can  accomplish  his  result  by  non-infring- 
ing means.229 

224  Parker  v.  Sears,  1  Fisher,  102,  225  Westiughouse  v.  Carpenter, 

1850;  American  Diamond  Rock  43   F.   R.  894,   1888;  also,  Am. 

Boring  Co.  v.  Sheldon,  1  F.  R.  870,  Sulphite    Pulp    Co.    v.    Hinck- 

1880;  American  Diamond  Rock  ley    Fibre    Co.,   217    F.    R.    57, 

Boring  Co.  v.  Marble  Co.,  2  F.  R.  1914. 

353,    355,    356,    1880;    Reay    v.  228  White  v.  Walbridge,  46  F.  R. 

Raynor,    19    F.    R.    308,    1884;  526,  1891. 

Toledo  Reaper  Co.  v.  Harvester  227  Wheeler  v.  McCormick,   1 1 

Co.,  24  F.R.  739, 1885;  New  York  Blatch.    345,    1873;    Boomer    v. 

Packing  Co.  v.  Magowan,  27  F.  R.  Powder  Press  Co.,  13  Blatch.  107, 

111 ,  1886 ;  Underwood  Typewriter  1875. 

Co.    v.    Elliott-Fisher    Co.,    156  228  American  Bell  Telephone  Co. 

F.  R.  588,  1907;  American  Sul-  v.   Cushman  Telephone  Co.,   36 

phite  Pulp  Co.  v.  Crown-Columbia  F.  R,  488,  1888;  Wirt  v.  Hicks, 

Pulp  &  Paper  Co.,  169  F.  R.  140,  46  F.  R.  71,  1891. 

1909;  Motion  Picture  Patents  Co.  229  Du  Bois  v.  Kirk,  158  U.  S. 

v.  Centaur  Film  Co..  217  F.  R.  66,  1895. 
247,  1914. 


CHAP.    XXI.]  INJUNCTIONS  787 

§  700.  So,  also,  a  refusal  of  an  injunction  will  be  neces- 
sary, where  the  infringing  defendant  is  dead  at  the  time  of 
the  interlocutory  decree,  even  though  the  suit  may  have 
been  revived  against  his  legal  representative.230  In  such  a 
case  no  injunction  will  he  against  the  dead  defendant, 
because  he  is  no  longer  within  the  jurisdiction  of  the  court ; 
and  none  will  lie  against  the  legal  representative,  because 
he  never  infringed  the  patent.  For  reasons  of  similar 
legal  import,  an  injunction  will  be  refused  where  the  de- 
fendant is  a  corporation  and  undergoes  legal  dissolution 
before  the  interlocutory  decree.  This  point  of  law  is 
based  on  the  doctrine  that  a  court  will  not  direct  a  writ 
against  a  dead  corporation; 231  and  also  upon  the  rule  that 
it  will  not  enjoin  an  act  which,  from  the  nature  of  the  case, 
cannot  be  committed.232 

§  701.  But  the  fact  that  the  defendant  has  ceased  to 
infringe  the  patent,  and  says  that  he  will  not  infringe  it 
in  the  future,  is  no  reason  for  refusing  an  injunction  against 
him,363  unless  the  evidence  is  very  persuasive  that  further 

230  Draper  v.  Hudson,  1  Holmes,  ifornia  Electrical  Works,  51  F.  R. 
208,  1873.  754,  1892;  Winchester  Arms  Co. 

231  Mumma  v.  Potomac  Co.,  8  v.  American  Buckle  Co.,  54  F.  R. 
Peters,  286,  1834.  711,  1893;  New  York  Filter  Mfg. 

232  Potter  v.  Crowell,  3  Fisher,  Co.  v.  Chemical  Bldg.  Co.,  93 
115,  1866.  F.    R.    827,    1899;    Stromberg- 

233  Jenkins  v.  Greenwald,  2  Carlson,  etc.,  Co.  v.  American 
Fisher,  42, 1857;  Potter  v.  Crowell,  Electric,  etc.,  Co.,  127  F.  R.  704, 
3  Fisher,  115,  1866;  Rumford  1904;  General  Electric  Co.  v. 
Chemical  Works  v.  Vice,  14  New  England  Electric  Mfg.  Co., 
Blatch.  180,  1877;  Bullock  Print-  128  F.  R.  738,  1904;  Brookfield 
ing-Press  Co.  v.  Jones,  3  Bann.  &  v.  Elmer  Glass  Works,  132  F. 
Ard.  195,  1878;  Facer  v.  Midvale  R.  312,  1904;  Luten  v.  Rhoads 
Steel- Work  Co.,  38  F.  R.  231,  &  Knisely,  194  F.  R.  169, 
1888;  Norton  v.  Automatic  Can  1912. 

Co.,  45  F.  R.  638, 1891;  California  But  see  Kennicott  Water  Soft- 
Electrical  Works  v.  Henzel,  48  ener  Co.  v.  Bain,  185  F.  R.  520, 
F.  R.  377,  1891;  Henzel  v.  Cal-      1911. 


7ss  [NJUNCTIONS  [CHAP.    XXI. 

infringemenl  will  not  take  place;284  and  further  as  has 
been  held,  unless  il  appears  thai  the  defendant  did  not 
have  notice  prior  to  the  commencement  of  the  suit,  and 
unless  the  answer  fails  to  contest  validity  or  infringe- 
ment.1' If  the  answer  asserts  the  right  to  make  the  al- 
leged infringing  devices,  a  very  strong  express  denial  of 
an  intent  ion  to  do  so  is  necessary  to  operate  as  a  disclaimer 
of  the  intention,  and  the  evidence  to  sustain  the  denial 
must  be  very  clear,236  for  whatever  tort  a  man  has  once 
committed,  he  is  likely  to  commit  again,  unless  restrained 
from  so  doing. 

§  701a.  Until  the  decision  of  Continental  Paper  Bag  Co. 
v.  Eastern  Paper  Box  Co.,237  there  had  been  much  doubt 
expressed  as  to  whether  or  not  an  injunction  should  under 
any  circumstances  be  granted  where  the  patent  had  never 
been  used  or  "worked."  By  the  decision  noted  it  was 
settled  that  the  jurisdiction  of  equity  to  grant  an  injunc- 
tion was  not  affected  either  by  length  of  non-use  or  by  the 
motive  of  the  owner  in  withholding  it  from  use. 

§  702.  A  permanent  injunction  will  be  postponed  till  a 
final  decree,  when  such  a  postponement  is  necessary  to 
save  the  defendant  from  special  hardship,  and  is  not  in- 
jurious to  the  just  rights  of  the  complainant; 238  or  where 

»»«  Crier  v.  Innes,  170  F.  R.  324,  237  Continental  Paper  Bag  Co. 
1909;  Chadeloid  Chemical  Co.  v.  v.  Eastern  Paper  Bag  Co.,  210 
Johnson,  203  F.  R.  993,  1913;  U.  S.  405,  1908. 
Goshen  Mfg.  Co.  v.  Hubert  A.  238  Barnard  v.  Gibson,  7  How- 
Myers  Mfg.  Co.,  215  F.  R.  594,  ard,  657,  1849;  Yale  &  Greenleaf 
1914.  Mfg.  Co.  v.  North,  5  Blatch.  462, 

235  Morton  Trust  Co.  v.  Stand-  1867;  Potter  v.  Mack,  3  Fisher, 

ard  Steel  Car  Co.,  177  F.  R.  931,  428,     1868;     Dorsey     Harvester 

1910;  Seeger  Refrigerator  Co.  v.  Rake  Co.  v.  Marsh,  6  Fisher,  401, 

White   Enamel   Co.,    178  F.   R:  1873;    West    Publishing    Co.    v. 

567,  1910.  Co-operative  Publishing  Co.,  53 

23«  Johnson  v.  Foos  Mfg.  Co.,  F.  R.  269,  1893. 
141  F.  R.  73,  1905. 


CHAP.    XXI.]  INJUNCTIONS  789 

an  immediate  discontinuance  of  the  defendant's  use  of  the 
patented  article  is  contrary  to  public  policy. -M  But  where 
such  a  postponement  would  be  injurious  to  the  just  rights 
of  the  complainant,  it  will  not  be  granted  to  avert  from  the 
defendant  the  consequences  of  his  infringement,  even 
where  those  consequences  may  be  hard  to  bear,240  except 
when  the  patent  has  but  a  short  time  to  run,  in  which  event 
security  for  recovery  of  damages  and  profits  may  be  per- 
mitted in  lieu  of  the  injunction.241  And  where  such  a 
postponement  is  allowed,  the  defendant  should  be  re- 
quired to  give  a  bond  for  the  security  of  the  complain- 
ant.242 

§  703.  A  permanent  injunction  may  be  suspended, 
pending  an  appeal  from  the  interlocutory  decree  which 
granted  it,  at  the  discretion  of  the  judge  who  decided  the 
case,  upon  such  terms  as  to  bond  or  otherwise,  as  he  may 
consider  proper  for  the  security  of  the  rights  of  the  opposite 
party.243  Such  a  bond  should  be  conditioned  upon  the 
result  of  the  appeal,  and  should  secure  the  profits  and  dam- 
ages to  accrue  after  the  interlocutory  decree,  and  before 
the  decision  of  the  Circuit  Court  of  Appeals  thereon,  and 
also  those  which  may  possibly  accrue  after  that  decision, 
and  before  its  reviewal  in  the  Supreme  Court,  in  the  event 
that  the  case  should  go  to  that  tribunal. 

239  Ballard  v.  Pittsburg,  12  F.  R.  Co.  v.  Christian,  3  Bann.  &  Ard. 
783,  1882.  53,    1877.      For    rule    in     third 

240  Brown  v.  Deere,  6  F.  R.  487,  circuit  see  Electric  Smelting  & 
1880.  Aluminum  Co.  v.  Carborundum 

241  Draper   Co.   v.   Am.   Loom  Co.,  189  F.  R.  710,  1911. 

Co.,  161  F.  R.  728,  1908;  Inter-         ™  In  re  Haberman  Mfg.  Co., 

urban   Ry.   &   Terminal   Co.   v.  147  U.  S.  525,   1893;  Edison  v. 

Westinghouse    Electric    &    Mfg.  American    Mutoscope    Co.,    110 

Co.,  186  F.  R.  166,  1911.  F.  R.  660,  1901 ;  Section  644a  of 

See  Section  592,  supra.  this  book. 

242  American  Middlings  Purifier 


790  [NJUNCTIONS  [chap.   XXI. 

And  a  permanent  injunction  may  be  suspended,  for  an 
extraordinary  cause,  pending  an  appeal  from  a  final  decree 
to  the  Circuit  of  Appeals,  at  the  discretion  of  the  judge 
who  decided  the  case  and  allowed  the  appeal,  upon  such 
terms  as  will  secure  1  he  rights  of  the  complainant.244  Those 
rights  include  the  right  to  recover  the  profits  and  dam- 
ages which  may  accrue  after  the  final  decree,  and  before 
the  end  of  the  suspension  of  the  injunction;  and  therefore 
the  security  of  those  rights  will  require  a  bond  to  cover 
those  profits  and  damages,  in  addition  to  the  supersedeas 
bond  which  must  be  filed  to  cover  the  profits  and  damages 
which  accrued  prior  to  the  final  decree. 

§  704.  A  permanent  injunction  may  be  dissolved  at  any 
time  within  six  months  after  the  expiration  of  the  term  of 
court  at  which  the  final  decree  in  the  case  was  entered;  and 
such  a  dissolution  will  be  had  where  the  defendant,  by 
means  of  a  supplemental  bill  in  the  nature  of  a  bill  of  re- 
view, or  by  a  bill  of  review,  secures  a  cancellation  of  that 
decree.245  And  such  a  dissolution  must,  of  course,  occur 
whenever  the  decree  which  granted  the  injunction,  is  re- 
versed by  a  higher  court. 

§  705.  Injunctions  to  restrain  infringements  of  patents 
may  be  granted  independent  of  all  other  relief ; 246  and  an 
injunction  may  also  be  granted  to  restrain  a  complainant 
from  bringing  an  action  at  law  against  the  defendant,  for 
the  same  infringements  as  any  of  those  covered  by  the 
action  in  equity.247  But  no  injunction  will  be  issued  on 
account  of  an  infringement  which  is  so  trivial  as  to  be  be- 
low the  dignity  of  the  court; 248  nor  to  restrain  a  junior 

244  Munson  v.  New  York,  19  Co.  v.  McCready,  17  Blatch.  291, 
F.  R.  313,  1884;  Equity  Rule  74.  1879. 

245  Sections  647  to  653  of  this  247  Morss  v.  Knapp,  35  F.  R. 
book.  218,  1888. 

248  American  Cotton  Tie  Supply  248  Lowell  Mfg.  Co.  v.  Hartford 


CHAP.    XXI.J  INJUNCTIONS  791 

patentee  from  bringing  actions  on  his  patent,  while  that 
patent  is  still  free  from  an  adjudication  of  invalidity.249 

Whether  it  is  proper  to  issue  an  injunction,  to  restrain  a 
complainant  from  bringing  actions  against  persons  who  are 
using  or  are  selling  those  articles,  for  the  making  of  which 
the  action  at  bar  was  brought  against  the  defendant,  is 
a  question  upon  which  the  decisions  which  have  now  ac- 
cumulated, are  conflicting.250  It  seems  that  when  the 
action  at  bar  is  against  a  manufacturer  and  is  brought  by 
a  maker  and  seller  of  the  patented  article  a  suit  against 
a  user  or  dealer  will  be  enjoined  if  the  bill  in  the  action  at 
bar  asks  for  an  accounting  of  all  damages  and  profits, 
on  the  ground  that  a  recovery  for  full  damages  and  profits 
would  operate  to  release  the  articles  from  the  monopoly 
of  the  patent.2500 

In  Kessler  v.  Eldred 251  it  was  decided  that  at  any  rate 
a  manufacturer  defendant  who  has  prevailed  in  a  Circuit 
Court  of  Appeals  on  the  issue  of  infringement  is  entitled 
to  such  an  injunction.    In  that  case  it  appeared  that  Kes- 

Carpet  Co.,  2  Fisher,  472,  1864;  Avery  Portable  Light  Co.,    152 

Wickwire  v.  Wire  Fabric  Co.,  41  F.  R.  642,   1906;  same  case  on 

F.  R.  36,  1889.  appeal  159  F.  R.  935,  1908. 

249  Asbestos  Felting  Co.  v.  Sal-  See  also  Kryptok  Co.  v.  Stead 
amander  Felting  Co.,  13  Blatch.  Lens  Co.,  190  F.  R.  767,  1911; 
453,  1876.  Stebler     v.     Riverside     Heights 

250  Birdsall  v.  Mfg.  Co.,  1  Orange  Growers'  Assn.,  214  F.  R. 
Hughes,  64,  1877;  Allis  v.  Stowell,  550,  1914;  Sherman,  Clay  &  Co. 
16  F.  R.  788,  1883;  Ide  v.  Engine  v.  Searchlight  Horn  Co.,  225  F.  R. 
Co.,  31  F.  R.  901,  1887;  National  497,  1915. 

Cash  Register  Co.  v.  Boston  Cash         250<x  Stebler  v.  Riverside  Heights 

Recorder  Co.,  41  F.  R.  51,  1889;  Assn.,  214  F.  R.  550,  1914;  but 

Kelly  v.  Ypsilanti  Dress-Stay  Co.,  see    Sherman,    Clay    &    Co.    v. 

44    F.    R.    19,    1890;    American  Searchlight  Horn  Co.,  225  F.  R. 

School-Furniture    Co.    v.    J.    M.  497,  1915. 

Sauder  Co.,  106  F.  R.  732,  1901;          251  Kessler  v.  Eldred,  206  U.  S. 

Commercial     Acetylene     Co.     v.  285,  1907. 


792  INJUNCTIONS  [chap.   XXI. 

sler  the  defendant,  a  manufacturer  of  cigar  lighters,  had 
been  sued  by  Eldred  for  Infringement,  and  the  Court  of 
Appeals  of  the  seventh  circuit  had  found  thai  Kessler 
did  not  infringe.  Eldred  had  thereupon  sued  Kirkland 
who  was  selling  another  make  of  cigar  lighter,  in  the  second 
circuit,  and  it  was  held  that  Kirkland  did  not  infringe. 
Eldred  had  then  sued  Breitweiser,  one  of  Kesslcr's  dealers, 
in  the  Northern  District  of  New  York,  to  enjoin  him  from 
selling  Kessler's  lighters  and  Kessler  had  assumed  the 
defence  of  that  suit.  The  case  came  before  the  Supreme 
Court  on  four  certified  questions  as  follows: 

" First:  Did  the  decree  in  Kessler's  favor,  rendered  by 
the  Circuit  Court  for  the  District  of  Indiana  in  the  suit  of 
Eldred  against  Kessler,  have  the  effect  of  entitling  Kessler 
to  continue  the  business  of  manufacturing  and  selling 
throughout  the  United  States  the  same  lighter  he  had 
theretofore  been  manufacturing  and  selling,  without 
molestation  by  Eldred  through  the  Chamber  patent? 

"  Second.  Did  the  decree  mentioned  in  the  first  question 
have  the  effect  of  making  a  suit  by  Eldred  against  any 
customer  of  Kessler's  for  alleged  infringement  of  the 
Chambers  patent  by  use  or  sale  of  Kessler's  lighters  a 
wrongful  interference  by  Eldred  with  Kessler's  business? 

"  Third.  Did  Kessler's  assumption  of  the  defence  of 
Eldred's  suit  against  Breitweiser  deprive  Kessler  of  the 
right,  if  that  right  would  otherwise  exist,  of  proceeding 
against  Eldred  in  the  State  and  district  of  his  citizenship 
and  residence  for  wrongfully  interfering  with  Kessler's 
business? 

"  Fourth.  If  Eldred's  act  were  wrongful,  had  Kessler 
an  adequate  remedy  at  law?" 

The  first  question  was  answered  in  the  affirmative, 
the  court  holding  that  the  judgment  on  the  appeal  settled 
finally  and  everywhere,  and  so  far  as  Eldred  by  virtue 


CHAP.    XXI. |  INJUNCTIONS  793 

of  his  ownership  of  the  Chambers  patent  was  concerned, 
that  Kessler  had  the  right  to  manufacture,  use  and  sell 
the  electric  cigar  lighter  before  the  court  free  from  all 
interference  by  Eldred  at  all  places.  The  court,  however, 
expressly  declined  to  pass  on  the  question  as  to  whether 
the  Court  of  Appeals  decision  was  a  bar  to  the  Breitweiser 
suit  or  whether  Breitweiser  could  take  advantage  of  it 
at  all  merely  confining  itself  to  deciding  that  Kessler's 
right  had  been  violated. 

The  second  question  was  accordingly  answered  in  the 
affirmative. 

The  third  question  was  answered  in  the  negative. 
Kessler  and  Eldred  happened  to  be  citizens  of  different 
States.  Whether  such  a  suit  could  be  brought  in  a  State 
court  in  the  event  that  diversity  of  citizenship  did  not 
exist,  or  whether  there  was  another  ground  for  Federal 
jurisdiction  than  diversity  of  citizenship,  was  not  con- 
sidered. 

The  fourth  question  was  answered  in  the  negative. 
The  doctrine  of  Kessler  v.  Eldred,  does  not,  however, 
go  to  the  extent  of  allowing  the  successful  defendant  to 
enjoin  the  plaintiff  from  suing  for  infringement  one  who 
purchases  the  material  of  one  of  the  elements  of  the  pat- 
ented structure  from  the  successful  defendant  and  con- 
structs the  complete  article.252  In  Woodard  Co.  v.  Hurd, 253 
it  was  held  that  one  who  merely  buys  parts  from  the  manu- 
facturer and  assembles  them  is  not  immune  from  suit- 
When  the  final  decree  allows  the  defendant  to  continue 
to  make  the  articles  in  question  free  from  interference 
from  the  plaintiff,  it  is  proper  that  the  decree  also  enjoin 

252  Rubber  Tire  Wheel  Co.  v.  See  also  Seim  v.  Hurd,  232  U.  S. 

Goodyear   Tire   &    Rubber   Co.,      420,  1914. 

232  U.  S.  413,  1914.  253  Woodward  Co.  v.  Hurd,  232 

U.  S.  428,  1914. 


794  INJUNCTIONS  [chap.   XXI. 

the  plaintiff  from  bringing  further  suits  against  the  de- 
fendant's customers,'  '  excepl  when  a  decree  in  another 
circuit  holding  the  patent  valid  and  infringed  has  been 
affirmed  by  the  Supreme  Court.'"' 

No  injunction  will  issue  on  behalf  of  a  defendant  against 
a  plaintiff  in  an  infringement  suit  to  restrain  the  latter 
from  sending  circulars  to  defendant's  customers  giving 
notice  of  the  suit,  and  warning  them  against  contributory 
infringement  where  the  statements  in  the  circulars  are 
true  and  sent  out  in  good  faith.256  The  sending  out  of 
misleading  notices  or  exaggerated  statements  of  the  scope 
and  effect  of  the  injunction  which  are  calculated  to  injure 
the  defendant's  legitimate  business  will  not  be  tolerated, 
however,  and  may  afford  ground  for  dissolving  the  in- 
junction.257 

An  injunction  will  also  issue  on  application  of  a  plain- 
tiff in  a  suit  to  compel  the  issuance  of  a  patent  under  Sec- 
tion 4915  of  the  Revised  Statutes,  to  stay  a  suit  brought 
by  the  defendant  to  enjoin  infringement  of  the  patent, 
until  the  suit  under  Section  4915  has  been  decided.258 

§  706.  The  duration  of  injunctions  in  patent  cases  de- 
pends upon  a  variety  of  circumstances.  Unless  such  a 
writ  is  expressly  made  to  apply  to  the  use  or  sale,  after  the 
expiration  of  the  patent,  of  specimens  of  the  patented 
thing  which  were  made  before  that  time,  such  injunction 
cannot  continue  after  that  expiration; 259  and  surely  no  such 

254  Goodyear  Tire  &  Rubber  Co.  Creamery  Package  Co.,  203  F.  R. 

v.  Rubber  Tire  Wheel  Co.,   164  53,  1913. 

F.  R.  869,  1908.  2"  Meyers  v.  Skinner,  186  F.  R. 

255Hurd  v.  Woodward  Co.,  190  347,  1911;  Rollman  Mfg.  Co.  v. 

F.  R.  28,  1911;  Hurd  v.  James  Universal  Hardware  Works,  229 

Goold  Co.,  197  F.  R.  756,  1912.  F.  R.  579,  1916. 

256  Mitchell     v.     International  268  Steinberger  v.  General  Elec- 

Tailoring   Co.,    169   F.    R.    145,  trie  Co.,  207  F.  R.  114,  1913. 

1909;    United    Electric    Co.    v.  259  Gamewell    Fire-Alarm    Tel. 


CHAP.    XXI.]  INJUNCTIONS  795 

writ  will  be  made  to  apply  to  such  use  or  sale  of  unpatented  1 
parts  of  an  infringing  combination. 260  Indeed,  no  injunc- 
tion ought  in  any  case  to  continue  after  the  expiration  of 
the  patent.261  Permanent  injunctions  are  sometimes 
called  perpetual  injunctions; but  in  patent  cases  that  would 
be  a  misnomer,  for  no  injunction  can  stand  longer  than  the 
right  upon  which  it  is  based,  and  patent  rights  are  never 
perpetual. 

§  707.  It  is  well  settled  that  in  a  patent  suit,  as  in  any 
other  suit,  the  court  having  acquired  jurisdiction  over  the 
persons  of  the  defendants,  may  control  them  by  decree  in 
personam,  from  doing  any  act  within  or  without  the  juris- 
diction at  home  or  abroad,  by  bringing  suit  or  otherwise 
which  shall  be  an  interference  with  the  plaintiff's  rights. 
Since,  however,  the  monopoly  of  a  patent  extends  only  to 
the  territorial  limits  of  the  United  States  this  power  would 
not  permit  the  court  to  enjoin  the  bringing  of  a  suit  on  a 
foreign  patent  for  the  same  invention.262 

§  708.  An  attachment  will  issue  to  bring  an  enjoined 
defendant  before  the  court  for  punishment,263  whenever 
the  complainant  institutes  proper  proceedings  therefor, 
and  proves  that  the  defendant  was  promptly  264  served 
with  a  writ  of  injunction,  and  that  the  writ  contained  a 
concise  description  of  the  particular  thing,  all  specimens 
of  which  it  forbade  the  defendant  to  make,  use,  or  sell,  265 

Co.  v.  Municipal  Signal  Co.,  61  262  Goodyear  Tire  &  Rubber  Co. 

F.  R.  208,  1894;  National  Folding  v.  Rubber  Tire  Wheel  Co.,   164 

Box  &  Paper  Co.  v.  Robertson,  F.  R.  869,  1908   (see  Rushmore 

104  F.  R.  552,  1900.  v.  Manhattan  Screw  &  Stamping 

2«°  Johnson  v.  Brooklyn  Co.,  37  Works,  170  F.  R.  188,  1909). 

F.  R.  147,  1888;  Hall  Signal  Co.  263  Bate    Refrigerating    Co.    v. 

v.  General  Ry.  Signal  Co.,   171  Gillett,  30  F.  R.  684,  1887. 

F.  R.  436,  1909.  284  McCormick    v.    Jerome,    3 

M1  Westinghouse  v.  Carpenter,  Blatch.  486,  1856. 

43  F.  R.  894,  1888.  2fl5  Whipple   v.    Hutchinson,    4 


796  INJUNCTIONS  [chap.   XXI. 

and  that  the  defendant  did  make,  or  use,  or  Bell,  or  did 
cause  to  be  made,  used,  or  sold  a  specimen  of  that  thing, 
or  of  a  thing  clearly  the  same,  after  having  been  served 
with  thai  writ.266  And  an  attachment  will  likewise  issue 
againsl  any  person  who  was  connected  with  the  defendant 
in  defending  againsl  the  suit,  before  the  injunction  was 
issued,  and  who  was  also  connected  with  the  defendant  in 
disobeying  that  injunction,  after  he  was  informed  of  its 
issue;  though  the  writ  of  injunction  which  was  served 
upon  the  defendant,  was  not  served  upon  the  person 
thus  connected  with  the  original  infringement  and  also 
connected  with  the  disobedience  of  the  injunction  writ.267 
Where  the  defendant  is  a  corporation,  and  where  the 
officer  of  that  corporation  upon  whom  the  writ  was  served, 
was  privy  to  its  violation,  an  attachment  will  issue  against 
him  in  person;  268  and  indeed  an  injunction  duly  served 
on  a  corporation  is  binding  on  all  persons  acting  for  that 
corporation,  and  who  have  notice  of  the  writ  and  of  its 
contents,  whether  they  were  actually  served  or  not.269 
So  also  an  attachment  will  issue  against  persons  wTho  dis- 
obey an  injunction  by  doing  as  officers  of  a  corporation, 
what  they  were  enjoined  from  doing  as  individuals.270 
But  an  attachment  will  not  issue  against  a  stranger  to  the 
suit,  merely  because  he  has  succeeded  to  the  business, 
in  the  conduct  of  which  the  defendant  infringed  the  com- 

Blatch.   191,   1858;  Bate  Refrig-  26<  Stahl  v.  Ertel,  62  F.  R.  922, 

erating  Co.  v.  Gillett,  24  F.  R.  1893;    United     States     Playing- 

696,  1885.  Card  Co.   v.  Spalding,  92  F.  R. 

268  Birdsall  v.  Mfg.  Co.,  2  Bann.  369,   1899. 
&  Ard.  519,  1877;  Allis  v.  Stowell,  268  Wetherill  v.  Zinc  Co.,  1  Bann. 

19  0.  G.  727,  1881;  Atlantic  Giant  &  Ard.  105,  1874. 
Powder  Co.  v.   Dittmar  Powder  2fl9  Phillips  v.  Detroit,  3  Bann.  & 

Mfg.   Co.,   9   F.    R.   316,    1881;  Ard.  150,  1877. 
Mundy  v.  Mfg.  Co.,  34  F.  R.  541,  270  American  Graphophone  Co. 

1888.  v.  Walcutt,  86  F.  R.  469,  1898. 


CHAP.    XXI. |  INJUNCTIONS  1\)1 

plainant's  patent,  even  where  that  successor  has  likewise 
infringed,271  except  in  cases  where  the  stranger  is  acting 
in  collusion  with  the  defendant  to  help  him  avoid  the  in- 
junction,27-' and  this  is  so  whether  or  not  the  stranger  was 
served  with  the  writ,  provided  he  knew  that  it  had  been 
issued.273  And  likewise  an  attachment  will  not  issue 
against  one  who  was  an  employee  of  the  defendant  at 
the  time  of  the  issuance  of  the  injunction  but  who  has 
since  engaged  in  an  independent  business  in  which  he 
makes  the  articles  adjudged  to  be  an  infringement.  In 
such  cases  the  owner  of  the  patent  will  be  relegated  to  an 
independent  suit  against  him.274 

Where  the  thing  proved  to  have  been  done  by  the  en- 
joined defendant,  consists  in  sending  to  some  foreign 
country,  and  selling  there,  articles  which  were  made  in 
the  United  States,  in  infringement  of  the  patent,  before 
the  injunction  was  granted,  an  attachment  will  not 
issue,  because  such  a  transaction  is  not  a  violation  of 
an  injunction  against  the  infringement  of  a  patent.275 
And  an  attachment  will  not  issue  where  the  character 
of  the  defendant's  doings,  after  the  injunction,  is 
doubtful.276 

Where  the  thing  proved  to  have  been  done  by  the  en- 
joined defendant,  differs  from  the  doings  described  in  the 
writ  of  injunction,  a  question  of  infringement  may  arise, 
which  may  require  to  be  brought  before  the  court  on  a 

271  Bate  Refrigerating  Co.  v.  163,  1895;  Rushmore  v.  Man- 
Gillett,  30  F.  R.  684,  1887.  hattan  Screw  &  Stamping  Works, 

272  Hamilton  v.  Diamond  Drill  170  F.  R.  188,  1909;  Victor  Talk- 
&  Mach.  Co.,  137  F.  R.  417,  1905.  ing  Machine  Co.  v.  Strauss,  171 

273  Hamilton  v.  Diamond  Drill  F.  R.  673,  1909. 

&  Mach.  Co.,  supra.  276  Accumulator  Co.  v.  Storage 

274  Donaldson  v.  Roksament  Co.,  53  F.  R.  793,  1892;  Cimiotti 
Stone  Co.,  178  F.  R.  103,  1910.  Unhairing  Co.   v.   Frolloehr,   121 

2-  Gould  v.  Sessions,  67  F.  R.      F.  R.  561,  1903. 


798 


[NJUNCTIONS 


[CHAP.    XXI. 


motion  for  another  or  extended  writ  of  injunction,277 
or  as  it  is  sometimes  called  a  supplementary  decree,278  or 
if  a  final  decree  has  been  entered,  by  another  bill  of  com- 
plaint,279  rather  than  on  a  motion  for  an  attachment. 
[f  that  question  is  a  doubtful  one,  an  attachment  will  not 
issue; 2S0  because  doubtful  questions  will  not  be  decided 
on  summary  proceedings  to  punish  persons  for  contempt 
of  court.281  But  not  every  question  is  doubtful  which  is 
difficult,  or  which  is  complex,  or  about  which  the  evidence 
is  conflicting.  It  is  therefore  the  duty  of  the  court,  on  a 
hearing  of  a  motion  for  an  attachment,  to  examine  what 
the  defendant  is  proved  to  have  done,  and  to  issue  an  at- 


277  Gold  &  Stock  Telegraph  Co. 
s.  Pearce,  19  F.  R.  419,  1884; 
Truax  v.  Detweiler,  46  F.  R.  118, 
1891;  Bonsack  Machine  Co.  v. 
Cigarette  Co.,  64  F.  R.  858,  1894; 
Westinghouse  Air-Brake  Co.  v. 
Christensen  Eng.  Co.,  126  F.  R, 
764,  1904. 

278Sundh  Electric  Co.  v.  Gen- 
eral Electric  Co.,  217  F.  R.  583, 
1914;  Gordon  v.  Tusco-Halvah 
Co.,  Inc.,  233  F.  R.  430,  1915; 
Individual  Drinking  Cup  Co.  v. 
Public  Service  Cup  Co.,  234 
F.  R.  654,  1916. 

279  United  States  Playing-Card 
Co.  v.  Spalding,  93  F.  R.  822, 
1899. 

280  California  Paving  Co.  v. 
Molitor,  113  U.  S.  617,  1884; 
Liddle  v.  Cory,  7  Blatch.  1,  1866; 
Welling  v.  Trimming  Co.,  2  Bann. 
&  Ard.  1,  1875;  Buerk  v.  Im- 
haeuser,  2  Bann.  &  Ard.  465, 
1876;  Onderdonk   v.   Fanning.   5 


Bann.  &  Ard.  431,  1880;  Bate  Re- 
frigerating Co.  v.  Eastman,  11 
F.  R.  902,  1881;  Higby  v.  Rubber 
Co.,  18  F.  R.  601,  1883;  Smith 
0.  Halkyard,  19  F.  R.  602,  1884; 
Wirt  0.  Brown,  30  F.  R.  187,  1887; 
Temple  Pump  Co.  v.  Mfg.  Co., 
31  F.  R.  292,  1887;  Howard  v. 
Mast,  33  F.  R.  867,  1888;  Mundy 
v.  Mfg.  Co.,  34  F.  R.  541,  1888; 
Pennsylvania  Drill  Co.  v.  Simp- 
son, 39  F.  R.  284,  1889;  Enter- 
prise Mfg.  Co.  v.  Sargent,  48  F.  R. 
453,  1891;  Mack  0.  Levy,  49 
F.  R.  857,  1892;  Westinghouse 
Air-Brake  Co.  0.  Christensen 
Eng.  Co.,  126  F.  R.  764,  1904; 
Brookfield  0.  Novelty  Glass  Mfg. 
Co.,  132  F.  R.  316,  1904;  Crown 
Cork  &  Seal  Co.  0.  American  Cork 
Specialty  Co.,  211  F.  R.  650, 1914. 
281  Re  Henris,  125  F.  R.  655, 
1903;  Westinghouse  Elec.  &  Mfg. 
Co.  v.  Sangamo  Electric  Co.,  128 
F.  R.  747,  1904. 


CHAP.    XXI.]  INJUNCTIONS  700 

tachment  if  his  doings  satisfactorily  appear,  in  the  eye  of 
the  law,  to  constitute  disobedience  of  the  writ  of  injunc- 
tion.282 A  motion  for  an  attachment  cannot  be  antici- 
pated and  outflanked  by  a  motion  to  expressly  limit  the 
injunction,  so  as  to  exclude  the  doings  of  the  defendant.283 
And  where  a  motion  for  an  attachment  is  denied,  on  the 
ground  of  infringement  being  too  doubtful  to  be  decided 
on  such  a  motion,  that  denial  does  not  prevent  a  decision 
finding  infringement,  on  a  new  motion,  or  in  a  new  suit, 
on  the  same  facts.284 

A  motion  for  an  attachment  for  contempt  of  court  for 
violating  an  injunction  is  an  independent  criminal  case, 
which  can  be  taken  to  the  Circuit  Court  of  Appeals  for 
review  on  a  writ  of  error,  while  the  action  in  equity  out  of 
which  it  arose,  is  still  pending  and  progressing  in  the 
lower  court.285 

§  709.  It  is  no  defence  to  a  motion  for  an  attachment  to 
show  that  the  decision  in  pursuance  of  which  the  injunc- 
tion was  granted  was  wrong; 286  or  that  new  evidence  has 
since  been  discovered  which,  if  it  had  been  known  at  the 
hearing  would  have  caused  a  contrary  decision ; 287  or  that 
the  defendant  was  advised  by  counsel  that  his  doings 
did  not  violate  the  injunction; 288  although  the  fact  that 

282  Wetherill  v.  Zinc  Co.,  1  1002,  1894;  Gould  v.  Sessions,  67 
Bann.  &  Ard.  105,  1874;  Schil-  F.  R.  163,  1895;  Gary  Mfg.  Co. 
linger  v.  Gunther,  2  Bann.  &  Ard.  v.  Acme  Flexible  Clasp  Co.,  108 
545,  1S77;  Morss  v.  Knapp,  37  F.  R.  873,  1901;  and  187  U.  S. 
F.  R.  353,  1889.  427,  1903. 

283  Edison  Electric  Light  Co.  v.  288  Woodworth  o.  Rogers,  3 
Westinghouse  Electric  Co.,  54  Woodbury  &  Minot,  135,  1847; 
F.  R.  504,  1893;  Thomas  &  Sons  Liddle  v.  Cory,  7  Blatch.  1,  1865. 
Co.  v.  Electric  Porcelain  Co.,  114  287  Whipple  v.  Hutchinson,  4 
F.  R.  407,  1902.  Blatch.  190,  1S58;  Phillips  v.  De- 

"«  Mack  v.  Levy,  59  F.  R.  468,      troit,  3  Bann.  &  Ard.  150,  1877. 
1894.  28S  Hamilton  v.  Simons,  5  Bissell, 

285  Sessions  v.  Gould,  63  F.  R.      77,  1869;  Paxton  v.  Brinton,  126 


800  [NJUNCTIONS  [CHAP.    XXI. 

the  defendanl  was  acting  under  such  advice  will  be  con- 
sidered in  determining  whether  or  nol  there  has  been 
intentional  disregard  of  the  injunction;  m  or  that  what  the 
defendanl  <lkl  was  done  us  the  employee  of  another;  2'J0 
or  that  the  defendant  had  merely  ordered  his  employees 
not  to  sell  the  infringing  articles  without  more  energetic 
step  to  see  that  his  orders  were  carried  out; 291  or  that  the 
writ  of  injunction  was  for  a  while  suspended  in  its  opera- 
tion, by  the  consent  of  the  complainant  without  any  order 
of  court; 292  or  that  the  writ  of  injunction  was  inadvert- 
ently made  broader  than  the  decision  of  the  court  would 
warrant.293  In  such  a  case  as  the  last  of  these,  the  defend- 
ant may  apply  to  the  court  to  correct  the  writ,  but  he  must 
not  disobey  it  while  it  remains  unchanged.  But  where  an 
injunction  was  based  on  a  consent  decree,  wrhich  decree 
was  entered  in  pursuance  of  a  compromise  of  the  parties, 
an  attachment  will  not  issue  for  a  disregard  of  that  in- 
junction, if  that  compromise  has  been  set  aside  by  a  court 
of  competent  jurisdiction,  or  if  such  a  court  has  enjoined 
the  complainant  from  enforcing  the  contract  of  com- 
promise.294 

§  710.  The  penalty  for  a  violation  of  an  injunction  de- 
pends upon  the  circumstances  of  the  particular  case  at  bar. 

F.  R.  542,   1903;  Goss  Printing  Blatch.  437,  1867;  Potter  v.  Mul- 

Co.  v.  Scott,  134  F.  R.  880,  1905;  ler,  1  Bond.  601,  1865;  Iowa  Barb 

Calculagraph  Co.  v.  Wilson,  136  Steel  Wire  Co.  v.   Barbed  Wire 

F.  R.  196,  1905.  Co.,  30  F.  R.  123,  1887. 

2,9  Westinghouse     Electric     &  291  Gillette  Safety  Razor  Co.  v. 

Mfg.  Co.  v.  Sangamo  Electric  Co.,  Wolf,  180  F.  R.  776,  1910. 

128   F.    R.   747,    1904;   Proudfit  292  Pentlarge  v.  Beeston,  1  F.  R. 

Loose    Leaf    Co.    v.    Kalamazoo  862,  1880. 

Loose  Leaf  Binder  Co.,  230  F.  R.  293  Sickles  v.  Borden,  4  Blatch. 

120,  1915.  15,  1857. 

290  Sickles  v.  Borden,  4  Blatch.  294  Pentlarge  v.  Beeston,  1  F.  R. 

15,  1857;  Goodyear  v.  Mullee,  5  802,  1880. 


CHAP.    XXI.]  [NJUNCTIONS  SOI 

Where  it  appears  that  the  defendant  had  no  intention  to 
disobey  the  writ,  the  penalty  may  be  confined  to  an  en- 
forced payment  of  the  costs  of  the  motion  for  an  attach- 
ment.295 Where  the  defendant  had  no  intention  to  disobey 
the  writ,  but  imprudently  did  so,  the  penalty  may  include 
the  costs  and  a  small  fine.296  Where  the  disobedience  is 
less  excusable,  the  defendant  may  be  compelled  to  pay 
all  the  expenses  and  counsel  fees  incurred  by  the  com- 
plainant in  relation  to  the  motion.297  And  where  disobe- 
dience of  an  injunction  is  excuseless  and  defiant,  the 
penalty  may  be  a  reasonable  fine  and  a  reasonable  im- 
prisonment. 

The  nature  of  the  punishment  that  may  be  inflicted  in 
a  civil  proceeding,  depends  on  its  character  and  purpose. 
If  the  punishment  imposed  in  a  civil  proceeding  for  con- 
tempt is  by  way  of  punitive  fine  or  imprisonment  it  must- 
appear  that  the  defendant  has  failed  to  do  something  af- 
firmatively required  of  him  by  the  court's  order.  This 
situation  seldom  occurs  in  the  case  of  injunctions  relating 
to  the  enforcement  of  patent  rights  and  of  course  does  not 
exist  in  the  case  of  a  bare  injunction  against  further  in- 
fringement, as  in  such  a  case  the  defendant  is  ordered 

295  Carsteadt  v.  Corset  Co.,  13  sen  Engineering  Co.,   121  F.  R. 

Blatch.  371,  1876;  Strowbridge  v.  562,  1903. 

Lindsay,  6  F.  R.  510,  1881 ;  Mac-  297  Doubleday    v.    Sherman,    4 

beth  v.  Gillinder,  54  F.  R.  172,  Fisher,  253,   1870;  Schillinger  v. 

1891 ;  Macbeth  v.  Braddock  Glass  Gunther,   2  Bann.   &  Ard.   545, 

Co.,  54  F.  R.  173,  1890;  Braddock  1877;   Stahl  v.   Ertel,   62  F.   R. 

( llass  Co.  v.  Macbeth,  64  F.  R.  922,  1893. 

120,  1894.  See    Christensen    Engineering 

298  Norton    v.    Automatic    Can  Co.    v.    Westinghouse   Air-Brake 

Co.,59F.R.  137, 1893;  Cary  Mfg.  Co.,  135  F.  R.  774,  1905,  where 

Co.  r.  Acme  Flexible  Clasp  Co.,  the  practice  is  discussed;  Robin- 

108    F.   R.   873,    1901;   Westing-  son  v.  S.  &  B.  Lederer  Co.,  146 

house  Air-Brake  Co.  v.  Christen-  F.  R.  993,  1906. 


802  [NJUNCTIONS  [chap.    XXI. 

merely  to  desist  from  doing  something.  The  reason  stated 
in  Gompers  v.  Hack's  Stove  &  Range  Co.,298  which  set- 
tled the  law  on  the  question,  is  that  when  an  affirmative 
act  is  required  and  is  not  done,  any  means  taken  to  force 
compliance  with  the  order  are  remedial  in  their  nature 
and  their  benefits  accrue  directly  to  the  benefit  of  the 
party  in  whose  favor  the  order  is  made.  On  the  other 
hand,  when  a  party  has  done  an  act  which  was  forbidden, 
no  punishment  by  fine  or  imprisonment  can  remedy  the 
evil,  and  consequently  its  only  object  is  punitive.  There- 
fore the  disobedient  party  in  such  a  case  is  liable  only  in  a 
proceeding  instituted  and  tried  as  for  a  criminal  con- 
tempt— i.  e.,  before  a  jury. 

On  the  other  hand  by  the  violation  of  an  injunction 
by  doing  forbidden  acts,  as  in  case  of  the  violation  of 
an  injunction  forbidding  infringement  of  a  patent, 
the  contempt  may  also  be  productive  of  injury  to  the 
other  party  and  to  the  extent  that  that  injury  may  be 
remedied  by  the  payment  of  money,  the  offending  party 
may  be  compelled  in  a  civil  proceeding  to  reimburse  the 
opposite  party  for  the  latter's  expenses  of  the  contempt 
proceeding  and  for  the  damage  caused  by  the  violation 
of  the  injunction.299 

298  Gompers  v.  Buck's  Stove  &  79,  1915;  Board  of  Trade  of 
Range  Co.,  221  U.  S.  418,  1911;  Chicago  v.  Tucker,  221  F.  R. 
Inre  Stern,  215  F.  R.  979,  1914.  305,  1915;  Proudfit  Loose  Leaf 

299  United  States  Envelope  Co.  Co.  v.  Kalamazoo  Loose  Leaf 
v.  Trauso  Paper  Co.,  221  F.  R.  Binder  Co.,  230  F.  R.  120,  1915. 


CHAPTER  XXII 


PROFITS 


711.  The  infringer's  profits  recov- 

erable in  equity. 

712.  In   cases  of  joint  infringe- 

ment. 

713.  In    cases    of    infringement 

partly  unprofitable. 

714.  What  spaces  of  time  an  ac- 

count of  profits  may  cover. 

715.  The  generic  rule  for  ascer- 

taining infringer's  profits. 

716.  Complainant's  damages  no 

criterion  of  defendant's 
profits. 

717.  Defendant's  profits  in  cases 

of  unlawfully  making  and 
selling  articles  covered  by 
the  complainant's  patent. 

718.  Method  of  ascertaining  cost 

of  making  and  selling  in- 
fringing articles. 

719.  Burden  of  proof  when  it  is 

necessary  to  separate 
profits  due  to  patented 
features,  from  profits  due 
to  other  features  of  an 
infringing  article. 
719a.  The  same  subject  continued. 

720.  Method  of  making  the  sep- 

aration where  defendant 
made  and  sold  the  pat- 
ented invention  sep- 
arately, as  well  as  in  con- 
nection with  other  things. 


721.  Method     where     defendant 

pays  royalty  for  right  to 
make  and  sell  the  features 
not  covered  by  the  patent 
in  suit. 

722.  Cases  where  no  separation  is 

required  or  allowed. 

723.  Method  of  making  the  sep- 

aration by  the  criterion  of 
comparative  cost. 
723a.  Defendant's  profits  in  de- 
sign cases. 

724.  Defendant's  profits  in  cases 

of  unlawfully  selling  ar- 
ticles partly  or  wholly 
covered  by  complainant's 
patent. 

725.  Defendant's  profits  in  cases 

of  unlawful  using  of 
patented  processes  or 
things. 

729.  Affirmative  gain. 

730.  Saving  from  loss. 

731.  Affirmative  gain  and  saving 

from  loss. 

732.  Standard  of  comparison  need 

not  have  been  used  by  the 
infringer. 

734.  Method  of  selecting  the 
proper  standard  of  com- 
parison. 

734a.  Credits  due  to  defendant's 
improvements. 

803 


sol 


PROFITS 


[CHAP.    XXII, 


735.  The  rule  as  to  using  has  only 
a  limited  application  to 
eases  of  infringement  l>y 
making  or  by  selling. 

1'M\.  1  uteres!       on       infringer's 

profits. 

i:\\).  Proceedings  before  masters. 
7  10.  Evidence  before  masters. 

741.  Objections   to  evidence  be- 

fore masters. 

742.  Questions  of  the  extent  of 

the   defendant's   infringe- 
ment. 

743.  Questions  relevant  to  differ- 

ent  sorts   of   defendant's 
alleged  infringement. 


711.  Master's  reports. 
745.  Exceptions  to   master's   re- 
port. 

74(i.   Defendants'    exceptions     to 

master's  reports. 
747.   Defendants'   aflirmative   ex- 


re- 


748. 


ex- 
re- 


ceptions   to    master's 
ports. 
Defendants'     negative 
ceptions    to    master's 
ports. 

749.  Complainants'  exceptions  to 

master's  reports. 

750.  Outline  of  practice  relevant 

to  master's  findings. 


§  711.  The  profits  which  are  recoverable  in  equity  for 
the  infringement  of  a  patent,  are  those  which  the  defend- 
ant made  from  that  infringement.1  They  are  the  profits 
which  he  actually  made;  not  those  which  with  worse,2 
or  better,3  management  he  would  or  might  have  made. 

Where  a  particular  infringer  realized  no  profit  from  his 
infringement,  none  can  be  recovered  from  him ;  but  where 
he  did  make  such  a  profit,  it  can  be  recovered,  whether  the 
general  business,  of  which  the  infringement  formed  a  part, 
was  profitable  to  him  or  not,4  and  whether  or  not  the  com- 
plainant was  employing,  at  the  time,  the  invention  which 
was  covered  by  the  patent  infringed.5 

1  Rubber  Co.   v.   Goodyear,   9      Howard,    546,     1853;    Dean    v. 


Wallace,  801,  1S69;  Elizabeth  v. 
Pavement  Co.,  97  U.  S.  138,  1878; 
Tilghman  v.  Proctor.  125  U.  S. 
144,  1888;  Belknap  v.  Schild,  161 
U.  S.  25,  1896. 

2  Lawther  v.  Hamilton,  64  F.  R. 
224,  1892. 

3  Livingston  v.  Woodworth,  15 


Mason,  20  Howard,  203,  1857; 
Keystone  Mfg.  Co.  v.  Adams,  151 
U.  S.  139,  1894;  Coupe  v.  Royer, 
155  U.  S.  565,  1895. 

4  Elizabeth  v.  Pavement  Co.,  97 
U.  S.  138,  1877;  Tilghman  v. 
Proctor,  125  U.  S.  146,  1888. 

5  Crosby  Steam  Gauge  &  Valve 


CHAP.    XXII.]  PROFITS  805 

The  recoverable  profits  are  those  which  resulted  directly, 
and  do  not  include  any  which  resulted  indirectly,  from  the 
infringement.6  The  case  of  Piper  v.  Brown  is  cited  as  an 
example  of  this  distinction.  The  difference  between  the 
amount  of  money  for  which  the  defendants  sold  their  pre- 
served fish,  and  the  aggregate  cost  of  that  fish  and  of  pre- 
serving it  by  the  patented  apparatus,  was  there  held  to  be 
direct  profit.  But  it  appeared  that  the  defendants  were 
also  dealers  in  fresh  fish,  and  that  they  sold  a  large  amount 
of  such  fish  at  higher  prices  than  they  could  have  done, 
had  they  not  reduced  the  supply  in  the  market  by  means 
of  preserving  fish  by  the  patented  apparatus.  The  in- 
crease in  the  price  of  fresh  fish,  which  was  thus  caused  by 
the  defendants'  infringement,  was  one  and  one-half  cents 
per  pound;  and  the  consequent  profits  made  by  the  de- 
fendants, amounted  to  more  than  six  thousand  dollars. 
But  the  court  held  that  those  profits  could  not  be  recovered 
by  the  patentee,  because  they  did  not  directly  result  from 
the  infringement  of  his  patent. 

§  712.  Where  several  defendants  were  joint  infringers  of 
a  patent,  but  where  all  the  resulting  profits  were  received 
by  part  of  the  wrongdoers,  the  decree  for  profits  will  be 
rendered  only  against  those  defendants  who  realized 
them.7  Where  all  of  the  defendants  realized  profits  during 
a  portion  of  the  time  covered  by  the  infringement  in  suit, 
and  where  a  part  of  them  realized  profits  during  the  resi- 
due of  that  time,  the  respective  profits  may  be  recovered 
accordingly,  and  a  decree  be  entered  against  all  of  the 
defendants  for  the  profits  in  which  all  participated,  and 

Co.  v.  Safety  Valve  Co.,  141  U.  S.      Co.  v.  MacDonald,  57  F.  R.  649, 
452,  1891.  1893. 

8  Piper  v.  Brown,  1  Holmes,  198,  7  Elizabeth  v.  Pavement  Co.,  97 

1873;     Heaton    Button-Fastener      U.    S.     140,     1877;    Belknap    v. 

Schild,  161  U.  S.  25,  1896. 


SOU  PROFITS  [CHAP.    XXII. 

against  a  part  of  the  defendants  for  the  profits  which  that 
part  alone  realized.8  Successive  owners  of  an  infringing 
business  transferred  pendente  lite  are  each  liable  only  for 
the  profits  made  by  himself."  And  where  one  part  of  the 
profits  of  joint  infringement  was  realized  by  one  of  the 
joint  infringers,  and  the  residue  by  another,  the  decree 
will  go  against  each,  for  his  own  share  only.10 

§  713.  Where  a  part  of  the  infringement  of  a  defendant 
resulted  in  profits,  and  the  residue  resulted  in  losses, 
the  complainant  is  entitled  to  recover  those  profits  without 
any  deduction  on  account  of  those  losses.11  Each  infringe- 
ment is  treated  by  itself.  If  it  resulted  in  profit,  that  profit 
belongs  to  the  patentee.  If  it  resulted  in  loss,  that  loss 
must  be  borne  by  the  infringer.  It  cannot  be  set  off 
against  the  patentee's  right  of  action  for  the  profitable 
infringement,  any  more  than  it  could  be  made  the  basis 
of  a  right  of  action  against  the  patentee  if  no  infringement 
had  been  profitable. 

§  714.  An  account  of  profits  cannot  be  had  where  none 
arose  before  the  action  was  begun,12  but  such  an  account 
is  not  confined  to  those  profits,  nor  indeed  to  those  which 
accrued  before  the  interlocutory  decree  was  entered,  but 
may  be  made  to  include  all  profits  realized  by  the  defend- 

8  Tatham  v.  Lowber,  4  Blatch.  Safety  Valve  Co.,  141  U.  S.  453, 

87, 1857;  Herring  a.  Gage,  3  Bann.  1891;     Graham     v.     Mason,     1 

&   Ard.   402,    1878;    New   York  Holmes,  90,   1872;  Steam  Stone 

Grape    Sugar    Co.    v.    American  Cutter  Co.  v.  Mfg.  Co.,  17  Blatch. 

Grape  Sugar  Co.,  42  F.  R.  456,  27,  1879;  Canda  Bros.  v.  Michigan 

1890.  Malleable  Iron  Co.,   152  F.   R. 

0  Young  v.  Hermann,  232  F.  R.  178,  1907;  Underwood  Type- 
361,  1916.  writer  Co.  v.  Fox  Typewriter  Co., 

10  Covert  v.  Sargent,  38  F.  R.  220  F.  R.  880,  1915. 
238,  1889.  12  Marsh  Vm  Nichols,  128  U.  S. 

1  ■  Callaghan  v.  Myers,  128  U.  S.  616,  1888. 
664,   1888;  Crosby  Valve  Co.  v. 


CHAP.    XXII.]  PROFITS  807 

ant  from  infringing  the  complainant's  right,  at  any  time 
prior  to  the  closing  of  the  account.13  And  such  an  account 
will  be  taken  in  conformity  with  the  statutes  relevant 
thereto,  as  they  existed  at  the  respective  dates  when  the 
infringement  occurred.14 

§  715.  The  generic  rule  for  ascertaining  the  amount  of 
the  profits  recoverable  in  equity  for  the  infringement  of  a 
patent,  is  that  of  treating  the  infringer  as  though  he  were  a 
trustee  for  the  patentee,  in  respect  of  the  profits  which  he 
realized  from  his  infringement.15  The  specific  rules  by 
means  of  which  this  generic  rule  is  administered,  are  some- 
what numerous  and  somewhat  elastic.  They  are  adapted 
to  the  varying  natures  of  patented  inventions,  and  to  the 
varying  circumstances  under  which  the  patents  for  those 
inventions  are  respectively  infringed.16  They  all  require 
the  best  evidence,  of  which  the  nature  of  each  particular 
case  to  which  they  may  be  respectively  applied,  will 
reasonably  admit,17  and  that  evidence  must  be  reasonably 
definite18  and  convincing.19 

§  716.  The  patentee's  royalty  is  no  measure  of  the  de- 
fendant's profits,20  even  in  a  case  where  the  patentee 
habitually  exercised  his  exclusive  right  by  granting  li- 
censes to  others.21    Nor  are  any  other  facts  which  relate 

13  Rubber  Co.  v.  Goodyear,  9  18  Wetherill  v.  Zinc  Co.,  1  Barm. 
Wallace,    800,     1869;    Knox    v.  &  Aid.  486,  1874. 
Quicksilver  Mining  Co.,  6  Sawyer,  17  Herring  v.  Gage,  3  Bann.  & 
435,  1878;  Creamre  v.  Bowers,  35  Ard.  399,  1878;  Emigh  v.  Railroad 
F.  R.  209,  1888.  Co.,  6  F.  R.  283,  1881. 

14  Untermeyer  v.  Freund,  58  18  Fischer  v.  Hayes,  39  F.  R. 
F.  R.  212,  1893.  613,  1889. 

15  Root  v.  Railway  Co.,  105  19  Locomotive  Safety  Truck  Co. 
U.  S.  214,  1881;  Tilghman  v.  v.  Railroad  Co.,  2  F.  R.  681,  1880. 
Proctor,  125  U.  S.  148,  1888;  20  Knox  v.  Quicksilver  Mining 
Belknap  v.  Schild,  161  U.  S.  25,  Co.,  6  Sawyer,  430,  1878. 

1896.  21  Tilghman    v.     Proctor,     125 


Mis  PROFITS  [CHAP.    XXII. 

to  the  measure  of  the  complainant's  damages,  material 
to  inquiries  touching  the  amount  of  the  defendant's  prof- 
its." It  is  immaterial  that  the  profits  made  by  the  de- 
fendant would  not  have  been  made  by  the  plaintiff." 

§  717.  The  difference  between  the  amount  it  cost  the 
defendant  to  make  and  sell  his  specimens  of  the  patented 
tiling,  and  the  amount  which  he  received  for  those  speci- 
mens, is  in  many  cases  the  amount  of  his  profits.'21  That 
is  the  fact  where  the  only  infringement  consisted  of  such 
making  and  selling,  and  where  no  part  of  ascertainable 
cost  or  value,  other  than  those  covered  by  the  patent  in 
suit,  entered  into  the  composition  of  the  specimens  which 
were  made  and  sold.25 

In  the  first  case  just  cited,  it  appears  that  the  patent 
did  not  cover  all  the  elements  of  the  articles  of  merchandise 
which  were  made  and  sold  by  the  defendant.  But  those 
unpatented  elements  were  disregarded  in  that  case,  because 
the  conduct  of  the  defendant  had  rendered  impossible  a 
separate  account  of  the  profits  due  to  the  patented, 
and  those  due  to  the  unpatented,  features  of  those  arti- 
cles.26 

U.S.  143, 1888; Wooster v.Taylor,  Wallace,  803,  1869;  Elizabeth  v. 

14  Blatch.  403, 1878.  Pavement  Co.,  97  U.  S.  141,  1877; 

22  Elizabeth  v.  Pavement  Co.,  Warren  v.  Keep,  loo  U.  S.  268, 
97  U.  S.  143,  1877;  Beach  v.  1894;  Jenkins  v.  Greenwald,  1 
Hatch,  153  F.  R.  763,  1907.  Bond,  141,  1857;  Sayre  v.  Scott, 

23  Brennan  &  Co.  v.  Dowagiac  55  F.  R.  975,  1893;  Orr  &  Lockett 
Mfg.  Co.,  162  F.  R.  472,  1908;  Hardware  Co.  v.  Murray,  163 
Carborundum  Co.  v.  Electric  F.  R.  54,  1908;  Yesbera  v.  Hard- 
Smelting,  etc.,  Co.,  203  F.  R.  esty  Mfg.  Co.,  166  F.  R.  120, 
976,  1913.  1909;  Conroy  v.  Penn.  Electrical 

24  Simpson  v.  Davis,  22  F.  R.  &  Mfg.  Co.,  199  F.  R.  427.  1912; 
444,  1884;  Shannon  v.  Brunei*,  Seegar  Refrigerator  Co.  v.  Amer- 
33  F.  R.  872,  1888;  Am  Ende  v.  ican  Car  &  Foundry  Co.,  219 
Seabury,  43  F.  R.  672,  1890.  F.  R.  565,  1915. 

25  Rubber  Co.   v.  Goodyear,  9  2B  And  so  in  Brennan  &  Co.  v. 


CHAP.    XXII.]  PROFITS  S09 

111  the  second  of  the  cited  cases,  it  appeared  that  the 
pavement  which  was  made  by  the  New  Jersey  Wood 
Paving  Co.  for  the  city  of  Elizabeth,  contained  the  entire 
invention  of  the  complainant,  and  contained  an  addition 
thereto,  which  addition  might  or  might  not  have  contrib- 
uted to  the  profit  which  resulted  to  the  Paving  Co.  from 
its  contract.  Under  those  circumstances,  the  Supreme 
Court  held  that  the  entire  profit  should  go  to  the  patentee, 
because  it  was  not  ascertainable  how  much  was  due  to 
the  additional  element.  The  principle  of  both  these  prece- 
dents on  this  point  appears  to  be,  that  where  a  defendant 
mingled  profits  which  he  made  as  an  infringer,  with  those 
he  made  otherwise,  and  where  there  is  no  criterion  by 
means  of  which  they  can  be  separated,  he  must  submit 
to  the  recovery  of  the  whole. 

In  the  third  case,  the  infringement  consisted  in  making 
and  selling  a  particular  kind  of  stove  grates,  which  was 
admitted  to  infringe  all  the  claims  of  the  complainant's 
patent  thereon.  The  Supreme  Court  affirmed  a  decree  for 
the  difference  between  the  complainant's  evidence  of  the 
cost  of  making  the  grates,  and  the  amount  for  which  the 
defendant  sold  them. 

Although  the  device  of  the  patent  may  be  a  mere  im- 
provement on  an  existing  device,  the  improvement  may 
nevertheless  be  the  thing  which  brings  about  the  sale  and 
if  that  is  the  case,  the  plaintiff  is  entitled  to  recover  the 
entire  profits.27 

The  general  principle  announced  in  the  foregoing  para- 

Dowagiac  Mfg.  Co.,   162  F.  R.  187   F.    R.    123,    1911;   Roth   v. 

472,  1908;  Dowagiac  Mfg.  Co.  v.  Harris,  197  F.  R.  929,  1912;  Van 

Superior  Drill  Co.,  162  F.  R.  479,  Brunt  v.  La  Crosse  Plow  Co.,  208 

1908.  F.  R.  281,  1913;  La  Crosse  Plow 

»  Force   v.   Sawyer-Boss   Mfg.  Co.  v.  Van  Brunt,  220  F.  R.  626, 

Co.,  143  F.  R.  894,  1906;  Maimin  1915. 
v.   Union   Special   Machine  Co., 


810  PROFITS  [CHAP.    XXII, 

graph  creates  an  important  modification  of  the  rule  which 
has  been  announced  in  a  number  of  cases  fco  the  effect 
that  when  the  claim  of  a  patent  infringed  covers  a  unitary 
structure  which  is  made  and  sold  by  the  defendant  without 
addition  or  change,  the  plaintiff  is  entitled  to  recover  the 
entire  profits.-8  Even  though  the  claim  cover  a  unitary 
structure,  which  is  made  and  sold  by  the  defendant,  the 
plaintiff  may  not  recover  all  the  profits  made  by  the  de- 
fendant if  it  appears  that  the  real  invention  lies  in  a  single 
element  and  is  in  fact  merely  an  improvement  over  prior 
structures,  as  this  may  be  the  case  in  spite  of  the  rule  of  the 
Patent  Office  which  requires  a  claim  to  include  a  com- 
pletely operative  combination.29 

§  718.  When  taking  an  account  of  profits  in  the  method 
indicated  in  the  last  section,  it  is  generally  easy  to  ascer- 
tain the  amount  which  the  defendant  realized  for  the 
articles  which  he  made  and  sold;  but  it  is  generally  difficult 
to  determine  how  much  it  cost  him  to  make  and  sell  them. 
Such  an  inquiry  must  consist  of  collecting  direct  evidence 
upon  the  subject;  and  cannot  consist  in  ascertaining  the 
cost  to  other  parties,  of  making  and  selling  similar  arti- 
cles.30 One  such  inquiry  occupied  ex-Chancellor  Wal- 
wtorth,  as  master,  more  than  ten  years,  and  occupied 
the  judge  who  passed  upon  the  exceptions  to  his  report 
at  least  as  many  weeks.31  When  such  accounts  are  taken, 
the  elements  which  are  allowed  to  enter  into  that  cost 
are  the  following: 

1.  The  market  value  of  materials  on  hand  at  the  time 

28  Seegar    Refrigerator    Co.    v.  29  Hermann  v.  Youngstown  Car 

American  Car  &  Foundry  Co.,  Mfg.  Co.,  216  F.  R.  604,  1914. 

212  F.  R,  742,  1914;  Yesbera  v.  3°  Robins  v.  Illinois  Watch  Co., 

Hardesty,  166  F.  R.  120,  1908;  78  F.  R.  124,  1897;  and  81  F.  R. 

Or  &  Lockett  Hardware  Co.  v.  957,  1897. 

Murray,  163  F.  R.  54,  1908.  31  Troy  Iron  &  Nail  Factory  v. 

Corning,  6  Blatch.  328,  1869. 


CHAP.    XXII. J  PROFITS  SI] 

the  infringement  began,  and  the  actual  cost  of  materials 
subsequently  purchased,  but  not  the  market  value  of  the 
latter  at  the  time  they  were  used  in  infringing. 3- 

2.  Money  paid  in  reasonable  amounts  to  persons  em- 
ployed in  making  and  selling  the  infringing  articles,  even 
where  those  persons  were  officers  or  stockholders  of  the 
infringing  corporation.33 

3.  Proper  remuneration  for  the  labor  of  the  infringer  in 
conducting  the  infringement.  This  element  has  been  dis- 
allowed in  one  case; 34  but  the  same  reasoning  which  justi- 
fied the  Supreme  Court  in  allowing  the  members  of  a  de- 
fendant corporation  for  their  personal  services,  calls  for 
the  same  allowance  where  the  men  who  infringe,  do  so  as 
partners  or  as  individuals.  Where  a  number  of  men  form 
a  corporation  and,  as  such,  infringe  a  patent  by  making 
and  selling  specimens  of  a  patented  thing,  the  Supreme 
Court  approves  a  proper  allowance  for  their  labor,  being 
made  an  element  in  the  cost  of  those  specimens,  when 
those  men  are  forced  to  pay  over  those  profits  to  the  pat- 
tentee.  There  is  the  same  reason  for  making  the  same 
allowance,  where  two  such  men  make  and  sell  such  speci- 
mens as  partners,  or  where  one  man  does  so  alone.  But 
it  is  the  labor  of  the  infringer  in  making  or  selling  infring- 
ing articles,  or  in  performing  an  infringing  process,  that 
is  contemplated  in  this  paragraph.  Salaries  which  are  re- 
ceived by  partners  in  the  place  of  partnership  profits,  or 

32  Rubber  Co.  v.  Goodyear,  9  Steam  Stone  Cutter  Co.  v.  Mfg. 
Wallace,  803,  1869;  Hemolin  Co.  Co.,  17  Blatch.  29, 1879;  National 
v.  Harway  Dyewood  &  Extract  Folding-Box  &  Paper  Co.  v.  Day- 
Co.,  166  F.  R.  434,  1908.  ton  Paper  Novelty  Co.,  95  F.  R. 

33  Rubber  Co.  v.  Goodyear,  9  994,  1899. 

Wallace,    803,    1869;    American  34  Williams     v.      Leonard,      9 

Nicholson  Pavement  Co.  v.  Eliz-      Blatch.  476,  1872. 
abeth,  1  Bann.  &  Ard.  442,  1874; 


S 1 2  PROFITS  [CHAP.    XXII. 

which  are  paid   for  a  general  oversight   of  partnership 
business,  do  not  come  in  this  category.35 

4.  Interest  on  borrowed  money;  3B  but  not  interest  on 
capital  stock;  except  where  the  property  represented  by 
the  capital  stock  was  used  only  in  conducting  the  infring- 
ing business,  or  where  the  defendant  clearly  proves  what 
portion  of  the  value  of  that  property  was  thus  used,  so  as 
to  enable  an  apportionment  of  interest  to  be  made  between 
the  infringing  business,  and  the  other  business  contempo- 
raneously conducted  by  the  defendant." 

5.  Expenses  of  selling,  including  advertising,38  and  com- 
missions.39 

6.  Miscellaneous  expenses  equitably  chargeable  to  the 
infringing  business,40  but  not  taxes  and  insurance  unless 
paid  on  a  plant  devoted  entirely  to  the  infringing  busi- 
ness.41 

7.  Royalties  paid  on  other  patents  used  in  the  infring- 
ing structure.42 

A  method  of  ascertaining  the  profits  of  a  corporation  in- 
fringer, which  is  approved,  is  to  add  to  the  total  amount 
of  the  dividends  such  amounts  as  the  corporation  paid 
out  other  than  in  the  conduct  of  its  business.43 

35  Callaghan  v.  Myers,  128  U.  S.  ford  Belting  Co.,  123  F.  R.  94, 
663,  1888.  1903. 

36  Rubber  Co.  v.  Goodyear,  9  40  Winchester  Arms  Co.  v. 
Wallace,  804,  1869.  American  Cartridge  Co.,  62  F.  R. 

37  Seabury   v.   Am   Ende,    152  278,  1894;  Piazet  Novelty  Co.  v. 
U.  S.  564,  1894;  Western  Glass  Headley,  123  F.  R.  897,  1903. 
Co.  v.  Schmertz  Wire  Glass  Co.,  41  Carborundum  Co.  v.  Electric 
226  F.  R.  730,  1915.  Smelting,  etc.,  Co.,  203  F.  R.  976, 

38  Rubber  Co.  v.  Goodyear,  9  1913. 

Wallace,    804,    1869;    Manufac-  42  Hermann  v.  Youngstown  Car 

turing  Co.  v.  Cowing,  105  U.  S.  Mfg.  Co.,  216  F.  R.  604,  1914. 
257,  1884;  La  Baw  v.  Hawkins,  43  National      Metal      Weather 

2  Bann.  &  Ard.  566,  1877.  Strip  Co.  v.  Bredin,   186  F.   R. 

39  Kissinger-Ison  Co.   v.  Brad-  490,1911. 


CHAP.    XXII.]  PROFITS  813 

§  719.  Where  the  thing  made  and  sold  by  the  defendant 
contained  not  only  the  invention  of  the  complainant,  but 
also  some  other  invention  or  feature  of  ascertainable  cost 
and  provable  value,  the  complainant  except  in  design  cases, 
can  recover  only  that  part  of  the  defendant's  profit  which 
was  due  to  the  infringing  parts  or  features  of  the  thing 
made  and  sold  by  the  defendant;  and  the  burden  was  on 
the  complainant  to  prove  the  amount  of  that  part.  At 
least  such  was  the  law 44  with  some  exceptions  prior  to  the 
Supreme  Court  decision  of  Westinghouse  Electric  &  Mfg. 
Co.  v.  Wagner  Electric  &  Mfg.  Co.45  The  exceptions 
mentioned  held  that  this  burden  was  imposed  on  the  com- 
plainant only  after  the  defendant  had  proven  the  existence 
of  such  features  and  that  they  affected  the  price  of  the 
infringing  article.46  Some  cases  made  a  distinction  be- 
tween an  added  device  covered  by  a  patent  owned  by  a 
third  party  and  an  added  unpatented  feature,  holding 
that  in  the  former  case  the  burden  was  on  the  defendant 
to  show  that  part  of  his  infringing  device  was  manufac- 
tured under  the  patent  to  the  third  person,  and  that  only 
in  that  event  was  the  burden  shifted  to  the  complainant 
to  prove  the  value  of  the  added  invention,  but  that  if  the 
added  feature  were  unpatented  the  burden  was  on  the  com- 

« Blake  v.  Robertson,  94  U.  S.  138  F.   R.   60,    1905;   Brown  v. 

733,  1876;  Garretson  v.  Clark,  111  Lanyon,    179   F.    R.   309,    1910; 

U.  S.  120,  1884;  Dobson  v.  Carpet  American   Street   F.    M.   Co.   v. 

Co.,  114  U.  S.  445,  1884;  Dobson  St.  Louis  Street  F.  M.  Co.,  192 

v.  Dornan,  118  U.  S.   17,  1885;  F.  R.  121,  1911. 

Keystone  Mfg.  Co.  v.  Adams,  151  45  Westinghouse  Electric  &  Mfg. 

U.    S.    147,    1894;    Robbins    v.  Co.  v.  Wagner  Electric  &  Mfg. 

Illinois    Watch    Co.,    81    F.    R.  Co.,  225  U.  S.  604,  1912. 

957,  1897;  Elgin  Wind  Power  &  48Canda    Bros.    v.    Michigan 

Pump  Co.  v.  Nichols,  105  F.  R.  Malleable  Iron  Co.,   152  F.   R. 

7S0,  1901;  Westinghouse  v.  New  178,    1907;   McSherry  Mfg.   Co. 

York  Air  Brake  Co.,  115  F.  R.  v.  Dowagiac  Mfg.  Co.,  160  F.  R. 

645,   1902;  Baker  v.  Crane  Co.,  948,  1908. 


Nil  PROFITS  [CHAP.    XXII. 

plainanl  not  only  to  prove  the  value  of  the  added  feature 
but  also  to  prove  its  existence  in  the  first  instance.47 
Other  cases  held  that  when  the  defendant  refused  to  pro- 
duce his  books  of  account  which  would  show  the  amount 
of  the  profits,  or  took  improper  methods  to  avoid  responsi- 
bility or  otherwise  acted  in  bad  faith,  the  burden  was 
thrown  on  him  to  show  any  circumstances  or  features 
concerning  the  infringing  article  that  contributed  to  the 
profits.48 

Whatever  the  correct  rule  was  prior  to  the  Westing- 
house  Electric  &  Mfg.  Co.  case,  that  case  finally  settled 
the  law  determining  on  which  party  the  burden  of  proof 
lay  to  separate  profits  obtained  by  a  defendant  on  an  arti- 
cle which  contained  features  additional  to  those  which 
infringed.  The  patent  in  that  case  covered  an  electrical 
apparatus  known  as  a  transformer  or  converter,  the  in- 
ventive feature  of  which  consisted  of  a  core  composed  of 
groups  of  thin  metal  plates  so  plugged  apart  as  to  leave 
open  spaces  in  the  core.  The  infringing  device  contained 
elements  which  were  not  included  in  the  plaintiff's  inven- 
tion. Mr.  Justice  Lamar,  speaking  for  the  court,  in  stat- 
ing the  rule  of  the  case  said : 

"But  when  a  case  of  confusion  does  appear — when  it 
is  impossible  to  make  a  mathematical  or  approximate 
apportionment — then  from  the  very  necessity  of  the  case 
one  party  or  the  other  must  secure  the  entire  fund.  It 
must  be  kept  by  the  infringer,  or  it  must  be  awarded,  by 
law,  to  the  patentee.  On  established  principles  of  equity, 
and  on  the  plainest  principles  of  justice,  the  guilty  trustee 
cannot  take  advantage  of  his  own  wrong.    The  fact  that 

47  Mast  v.  Superior  Drill  Co.,  Co.,  166  F.  R.  120,  1908;  Novelty 
154  F.  R.  45,  1907,  and  cases  Glass  Mfg.  Co.  v.  Brookfield,  170 
therein  cited.  F.  R.  946,  1909. 

48  Yesbera    v.    Hardesty    Mfg. 


CHAP.    XXII.]  PROFITS  815 

he  may  lose  something  of  his  own  is  a  misfortune  which 
he  has  brought  upon  himself;  and  if,  as  argued,  the  fund 
may  have  been  made  by  the  use  of  other  patents  also,  for 
which  he  may  be  liable  in  another  case,  it  is  again  a  mis- 
fortune which  he  has  brought  upon  himself  and  an  instance 
of  a  double  wrong  causing  double  liability.  He  cannot 
appeal  to  a  court  of  conscience  to  cast  the  loss  upon  an 
innocent  patentee  and  by  judicial  decree  repeal  the  pro- 
vision of  Rev.  Stat.,  Section  4921,  which  declares  that  in 
case  of  infringement  the  complainant  shall  be  entitled  to  re- 
cover the  'profits  to  be  accounted  for  by  the  defendant.' 

"This  conclusion  is  said  to  be  in  conflict  with  the 
Garretson  and  other  decisions  which,  it  is  claimed,  justify 
the  conclusion  that  the  defendant  is  entitled  to  retain  all 
of  the  profits  even  where  the  patentee  is  unable  to  make 
an  apportionment.  Warren  v.  Keep,  155  U.  S.  265.  An 
analysis  of  the  facts  of  those  cases  will  show  that  they  do 
not  sustain  so  extreme  a  doctrine.  For  they  deal  with 
instances  where  the  plaintiff  apparently  relied  on  the 
theory  that  the  burden  was  on  the  defendant,  and  for 
that,  or  other  reasons,  made  no  attempt  whatever  to  sep- 
arate the  profits.  None  of  the  cases  cited  discuss  the  rights 
of  the  patentee  who  has  exhausted  all  available  means  of 
apportionment,  who  has  resorted  to  the  books  and  em- 
ployees of  the  defendant,  and  by  them,  or  expert  testimony 
proved,  that  it  was  impossible  to  make  a  separation  of 
the  profits.  This  distinction,  between  difficulty  and  im- 
possibility, is  involved  in  the  ruling  by  the  Circuit  Court 
of  Appeals  for  the  sixth  circuit  in  Brennan  &  Co.  v. 
Dowagiac  Mfg.  Co.,  162  Fed.  Rep.  472,  476,  where  the 
Garretson  Case  was  distinguished,  and  the  court  said : 

"  In  the  present  case  the  infringer's  conduct  has  been 
such  as  to  preclude  the  belief  that  it  has  derived  no  ad- 
vantage from  the  use  of  plaintiff's  invention.  ...     In 


816  PROFITS  [chap.   XXII. 

these  circumstances,  upon  whom  is  the  burden  of  loss  to 
fall?  We  think  the  law  answers  this  question  by  declaring 
that  it  shall  rest  upon  the  wrongdoer,  who  has  so  confused 
his  own  with  that  of  another  that  neither  can  be  distin- 
guished. It  is  a  bitter  response  for  the  court  to  say  to  the 
innocent  party,  'You  have  failed  to  make  the  necessary 
proof  to  enable  us  to  decide  how  much  of  these  profits  are 
your  own';  for  the  party  knows,  and  the  court  must  see, 
that  such  a  requirement  is  impossible  to  be  complied  with. 
The  proper  remedy  to  be  applied  in  such  cases  is  that 
stated  by  Chancellor  Kent  in  Hart  v.  Ten  Eyck,  2  Johns. 
Ch.  (N.  Y.)  62,  108,  where  he  said:  'The  rule  of  law  and 
equity  is  strict  and  severe  on  such  occasion.  .  .  .  All 
the  inconvenience  of  the  confusion  is  thrown  upon  the 
party  who  produces  it,  and  it  is  for  him  to  distinguish  his 
own  property  or  lose  it.' 

"It  may  be  argued  that,  in  its  last  analysis,  this  is  but 
another  way  of  saying  that  the  burden  of  proof  is  on  the 
defendant.  And  no  doubt  such,  in  the  end,  will  be  the 
practical  result  in  many  cases.  But  such  burden  is  not 
imposed  by  law ;  nor  is  it  so  shifted  until  after  the  plain- 
tiff has  proved  the  existence  of  profits  attributable  to  his 
invention  and  demonstrated  that  they  are  impossible  of 
accurate  or  approximate  apportionment.  If  then  the 
burden  of  separation  is  cast  on  the  defendant  it  is  one 
which  justly  should  be  borne  by  him,  as  he  wrought  the 
confusion." 

It  appears,  therefore,  from  the  opinion  in  the  Westing- 
house  Electric  &  Mfg.  Co.  case  that  before  the  burden  of 
separation  of  profits  is  shifted  to  the  defendant,  the  plain- 
tiff on  his  part  must  first  show  the  impossibility  of  proving 
them.  The  evidence  offered  by  the  plaintiff  in  the  West- 
inghouse  case  which  was  held  sufficient  to  shift  the  burden 
from  the  plaintiff  to  the  defendant,  was  supplied  by  wit- 


•  HAP.    XXII.]  PROFITS  Si  7 

nesses  in  the  employ  of  the  defendant,  who  kept  the  books, 
purchased  the  material,  superintended  the  construction 
and  affixed  the  price  of  the  defendant's  transformers,  but 
who  were  not  able  to  show  what  profits  had  been  made 
and  consequently  were  not  able  to  show  what  part  of  the 
profits  were  contributable  to  the  patent  and  what  to  the 
additions.  The  plaintiff,  however,  proved  the  existence 
of  profits,  and  therefore  as  the  court  said:  "It  carried  the 
burden  imposed  by  law  and  established  every  element 
necessary  to  entitle  it  to  a  decree  except  one.  As  to  that 
the  act  of  the  defendant  had  made  it  not  merely  difficult 
but  impossible  to  carry  the  burden  of  apportionment." 
£)ther  cases  following  the  Westinghouse  Electric  &  Mfg. 
Co.  case  are  cited  in  the  note.49 

In  any  event  the  evidence  of  the  complainant  as  to  sepa- 
ration of  profits  need  not  be  severely  accurate  and  may  be 
sufficient  where  it  furnishes  foundation  for  just  inferences 
rather  than  certain  knowledge.50 

In  Dowagiac  Mfg.  Co.  v.  Minnesota  Plow  Co.,51  the 
court  reiterated  the  rule  laid  down  in  the  Westinghouse 
case,  regarding  the  rule  governing  the  burden  of  apportion- 
ment, saying:  "But  the  plaintiff  did  not  conform  to  this 
rule.  It  neither  submitted  evidence  calculated  to  effect 
the  apportionment  nor  attempted  to  show  that  it'  was 
impossible;  and  this,  although  the  evidence  upon  the 
accounting  went  far  toward  showing  that  there  was  no  real 

49  Carborundum  Co.  v.  Electric  41  F.  R.  597,  1890;  Westinghouse 
Smelting  &  Aluminum  Co.,  203  Electric  &  Mfg.  Co.  v.  Wagner 
F.  R.  976,  1913;  Van  Brunt  v.  Electric  &  Mfg.  Co.,  225  U.  S. 
La  Crosse  Plow  Co.,  208  F.  R.  604,  1912;  Dowagiac  Mfg.  Co.  v. 
281,  1913;  Seegar  Refrigerator  Minnesota  Moline  Plow  Co.,  235 
Co.  v.  American  Car  &  Foundry  U.  S.  641,  1915. 

Co.,  219  F.  R,  565,  1915;  Decker  51  Dowagiac  Mfg.  Co.  v.  Min- 

v.  Smith,  225  F.  R.  776,  1915.  nesota  Plow  Co.,  235  U.  S.  635, 

50  Adams  v.  Keystone  Mfg.  Co.,      1915. 


818  PROFITS  [chap.   XXII. 

obstacle  to  a  fair  apportionment.  Certainly  no  obstacle 
was  interposed  by  the  defendant." 

§  720.  Where  the  defendant  made  and  sold  the  complain- 
ant's invention  separately,  as  well  as  in  connection  with 
other  inventions,  the  profit  which  he  made  on  the  separate 
sales,  is  the  measure  of  that  part  which  is  to  be  credited  to 
the  complainant's  invention,  of  the  profit  which  the  de- 
fendant made  on  the  joint  sales.52  This  is  a  fairer  method 
of  division  in  such  a  case,  than  would  be  a  division  of  the 
gross  profits  in  proportion  to  the  comparative  cost  of  the 
elements  covered  by  the  patent  in  suit,  and  those  not  so 
covered;  because  the  comparative  cost  is  not  always  the 
best  evidence  of  the  comparative  utility  of  two  devices, 
nor  of  the  comparative  profit  at  which  they  can  be  made 
and  sold.53 

§  721.  Where  the  defendant  has  paid  or  contracted  to 
pay  other  patentees  a  royalty  for  that  part  of  the  thing 
made  and  sold  by  him,  which  is  not  covered  by  the  com- 
plainant's patent,  that  royalty  may  be  taken  as  the  meas- 
ure of  that  part  of  the  gross  profits  due  to  that  part  of  the 
article  in  suit.54  But  it  seems  that  this  rule  is  not  to  be 
applied  in  any  case  where  the  division  of  the  profits  can 
be  made  under  the  rule  of  the  last  section;  because  it  may 
sometimes  be  that  the  profits  due  to  that  part  of  the 
infringing  thing  which  is  not  covered  by  the  complainant's 
patent,  are  larger  than  the  royalty  which  the  defendant 
had  to  pay  for  the  right  to  make  and  sell  that  part. 

§  722.  Where  the  thing  made  and  sold  by  the  defendant 
would  be  useless  for  its  special  purpose  without  the  part 

"Mason  v.  Graham,  23  Wal-  97  U.  S.  141,  1877;  La  Baw  v. 

lace,  276,  1874.  Hawkins,  2  Bann.  &  Ard.  565, 

53  Graham  v.  Mason,  1  Holmes,  1877;  Herman  v.  Youngstown 
89,  1872.  Car  Mfg.   Co.,   216  F.   R.   604, 

54  Elizabeth  v.  Pavement  Co.,  1914. 


CHAP.    XXII.]  PROFITS  819 

covered  by  the  complainant's  patent,  or  where  no  other 
known  article  would  answer  that  purpose  well  enough  to 
find  purchasers;  all  the  profits  which  the  infringer  derived 
from  making  and  selling  the  entire  thing  are  clearly  due 
to  the  patented  part,  and  are  therefore  recoverable  by  the 
complainant.  " 

§  723.  Where  the  profits  due  to  the  infringing,  and  those 
due  to  the  non-infringing,  elements  of  a  defendant's  article 
of  manufacture  and  sale  cannot  be  separated  by  any  other 
rule,  then  the  apportionment  may  be  made  by  dividing  the 
aggregate  profits  in  proportion  to  the  respective  cost  of  the 
different  parts.  This  method  of  making  the  division  is 
based  on  the  presumption  that  similar  articles  of  mer- 
chandise are  sold  at  a  like  percentage  of  profit  on  the  cost 
of  producing  them.  But  this  is  not  likely  to  be  the  fact 
where  one  of  those  articles  is  covered  by  a  patent  while 
the  others  are  not  so  covered,  because  monopolies  tend  to 
enhance  prices.  This  method  of  making  the  required 
division  will  therefore  always  be  more  favorable  to  the 
defendant  than  to  the  complainant;  where  no  part  of  the 
article  made  and  sold  by  the  former  is  covered  by  a  patent, 
except  the  part  which  is  covered  by  the  patent  of  the 
latter.  The  principle  of  this  method  was  approved  in 
Rubber  Co.  v.  Goodyear,56  though  in  that  case  it  was 
applied  to  the  work  of  dividing  profits  between  things 
covered,  and  other  things  not  covered,  by  the  complain- 
ant's patent,  instead  of  between  parts  of  the  same  thing 
so  covered,  and  other  parts  not  so  covered. 

55  Manufacturing  Co.  v.  Cow-  112    F.    R.    1016,    1902;    Piaget 

ing,  105  U.  S.  256,  1881;  Hurlbut  Novelty  Co.  v.  Headley,  123  F.  R. 

v.  Schillinger,  130  U.  S.  456,  1889;  897,  1903;  Penfield  v.  Potts,  126 

Crosby  Valve  Co.  v.  Safety  Valve  F.  R.  475,  1903. 
Co.,  141  U.  S.  453,  1891;  Wales  v.  56  Rubber  Co.  v.  Goodyear,  9 

Waterbury  Mfg.  Co.,  101   F.  R.  Wallace,802,    1869. 
127,  1900;  Coddington  v.  Propfe, 


820  PROFITS  [chap.   XXII. 

§  723a.  In  cases  for  infringement  of  design  patents,  a 
special  statute  provides  that  the  total  profits  made  from 
the  manufacture  or  sale  of  the  article  or  articles,  to  which 
the  design,  or  a  colorable  imitation  thereof,  has  been 
applied,  shall  be  recoverable."  But  in  order  to  recover 
under  this  statute,  the  complainant  must  show  that  the 
defendant  knew  of  the  complainant's  design,  and  knew 
of  the  complainant's  patent,  or  at  least  knew  of  facts 
which  put  him  upon  his  inquiry  for  that  patent,58  and  knew 
that  the  design  was  applied  to  the  infringing  article, 
without  the  license  of  the  owner  of  the  patent.''9 

In  suits  on  design  patents  as  in  others  the  plaintiff  must 
if  possible  apportion  the  profits  on  the  infringing  articles 
if  the  entire  profits  are  not  due  to  the  use  of  the  patented 
invention.60 

§  724.  Where  the  infringement  consisted  only  in  selling 
specimens  of  the  article  covered  by  the  complainant's 
patent,  the  profits  may  be  readily  ascertained  by  deducting 
the  cost  of  purchasing  and  selling  the  articles,  from  the 
amount  received  for  them  when  sold.  Where  the  subject- 
matter  of  the  patent  is  a  part  of  a  larger  article,  and  where 
a  separate  price  is  paid,  and  a  separate  price  is  obtained 
for  it,  the  gross  profit  on  the  thing  covered  by  the  patent 
may  be  ascertained  by  deducting  the  former  from  the 
latter.  But  in  such  a  case,  the  complainant  is  not  entitled 
to  recover  the  whole  of  that  gross  profit.  It  must  be 
charged  with  such  a  proportion  of  the  expenses  incurred 
in  selling  the  entire  article,  as  the  aggregate  money  re- 

57  24  Statutes  at  Large,  Ch.  105,  59  Anderson  v.  Pittsburgh  Lum- 
p.  387;  Untermeyer  v.  Freund,  58  ber  Co.,  47  F.  R.  68,  1891;  Fuller 
F.  R.  211,  1893;  Ripley  v.  Elson  v.  Field,  82  F.  R.  814,  1897. 
Glass  Co.,  49  F.  R.  927,  1892.  8°Bush  &  Lane  Piano  Co.  v. 

58  Smith  v.  Stewart,  55  F.  R.  Becker  Bros.,  234  F.  R.  79, 
484,  1893.  1916. 


CHAP.    XXII.]  PROFITS  S21 

ceived  from  the  infringing  device  bears  to  the  aggregate 
received  for  the  entire  apparatus  or  machine.61  The  prin- 
ciple of  this  rule  is  also  applicable  where  the  infringer 
made  the  articles  he  sold  instead  of  buying  them ;  and  the 
rules  applicable  to  the  latter  class  of  cases,  and  heretofore 
set  forth,  are  applicable,  with  some  reasonable  modifica- 
tions, to  cases  where  the  infringer  bought  the  infringing 
articles  which  he  sold,  instead  of  making  them  himself. 

§  725.  Where  unlawful  using  of  a  patented  article  or 
process  constitutes  the  infringement  involved  in  an  action 
in  equity,  the  infringer's  profits  are  ascertained  by  a  rule 
quite  different  from  either  of  the  foregoing.  That  rule, 
in  its  generic  character,  may  be  formulated  as  follows: 
The  advantage  which  the  defendant  derived  from  using 
the  complainant's  invention,  over  what  he  could  have 
derived  from  using  any  other  process  or  thing,  which  was 
known  prior  to  that  invention,  constitutes  the  profits 
which  the  complainant  is  entitled  to  recover.62  The 
other  process  or  thing  mentioned  in  the  rule,  is  called 
the  standard  of  comparison  in  the  case.  While  that  stand- 
ard of  comparison  must  have  been  known  prior  to  the 
complainant's  invention,63  it  needs  not  to  have  been  open 
to  the  public  at  any  time,  except  in  the  sense  that  it  must 
be  open  to  the  public  so  far  as  the  complainant's  patent 

"  The  Tremolo  Patent,  23  Wal-  Steel  &  Wire  Co.,  194  F.  R.  108, 

lace,  528,  1874.  1911. 

82  Doten  v.  City  of  Boston,  138  63  Turrill    v.    Illinois    Central 

F.  R.  406,  1905;  Fullerton  W.  G.  R.  R.  Co.,  20  F.  R.  912;  following 

Assn.     v.     Anderson-Barngrover  Cawood  Patent,  94  U.  S.  710;  and 

Mfg.  Co.,  166  F.  R.  443,  1908;  affirmed  by  Illinois  Central  R.  R. 

Novelty  Glass  Mfg.  Co.  v.  Brook-  Co.  v.  Turrill,  110  U.  S.  302,  1884; 

field,  170  F.  R.  946,  1909;  Brown  Sessions  v.  Romadka,  145  U.  S. 

Bag     Filling     Machine     Co.     v.  45,   1892;  Lawther  v.  Hamilton, 

Drohen,    175   F.   R.   576,    1910;  64  F.  R.  224,  1892. 
.Columbia  Wire  Co.  v.   Kokomo 


822  PROFITS  [chap.    XXII. 

in  suit  is  concerned.64  The  advantage  which  is  contem- 
plated by  the  general  rule,  is  the  result  of  some  superiority 
of  the  complainant's  invention  over  the  standard  of  com- 
parison; and  that  superiority  may  consist  in  the  fact  that 
the  complainant's  invention  performs  the  function  com- 
mon to  both,  with  equal  cheapness  and  greater  excellence, 
or  with  greater  cheapness  and  equal  excellence,  or  with 
greater  cheapness  and  greater  excellence;  and  therefore 
the  advantage  may  consist  either  in  affirmative  gain  or 
in  saving  from  loss,  or  in  both  of  those  elements. 

§  729.  The  advantage  consists  in  an  affirmative  gain,  in 
cases  wherein  the  patented  process  or  thing  produces  a 
valuable  article  from  materials  which  otherwise  would  be 
useless,  or,  if  useful  at  all,  useful  only  for  purposes  of  in- 
ferior value.  The  Goodyear  process  patent,65  if  it  had 
been  valid,  would  have  been  a  patent  of  this  sort,  and 
would  have  been  entitled  to  an  account  of  profits  ascer- 
tained according  to  the  rule  of  Section  725.  But  as  the 
only  patent  sustained  in  the  Goodyear  case  was  the  patent 
for  the  product,  and  inasmuch  as  that  patent  was  infringed 
by  the  defendant  only  in  making  and  selling  specimens  of 
the  invention  it  covered,  the  profits  were  ascertained  on 
an  entirely  different  plan. 

§  730.  But  the  advantage  consisted  in  saving  from  loss, 
in  most  of  the  cases  which  have  been  adjudicated  under 
the  general  rule. 

In  Mowry  v.  Whitney,66  the  advantage  was  a  saving  of 
materials  and  labor,  realized  from  the  use  of  the  com- 
plainant's process  in  manufacturing  car-wheels,  as  com- 
pared with  what  it  would  have  been  necessary  to  expend 

64  McCreary    v.    Pennsylvania  65  Rubber  Co.  v.  Goodyear,  9 

Canal     Co.,     141     U.     S.     464,      Wallace,  794,  1869. 
1891.  «"  Mowry  v.  Whitney,  14  Wal- 

lace, 651,  1871. 


CHAP.    XXII.]  PROFITS  823 

in  producing  similar  car-wheels,  salable  at  the  same  price, 
without  the  use  of  that  process.  In  the  case  of  the  Cawood 
Patent67  the  advantage  was  a  saving  of  labor  and  of  fuel, 
realized  from  the  use  of  the  complainant's  swage-block  in 
mending  the  exfoliated  ends  of  iron  railroad  rails,  as  com- 
pared with  the  labor  and  fuel  it  would  have  been  nec- 
essary to  expend  in  mending  those  rails  upon  a  common 
anvil. 

In  Mevs  v.  Conover,68  the  advantage  was  a  saving  of 
labor  in  splitting  kindling-wood  by  means  of  the  patented 
machine  of  the  complainant,  as  compared  with  the  labor 
which  would  have  been  required  to  split  the  same  quantity 
of  wood  by  hand,  or  by  any  other  machine.  The  justice 
of  the  decision  last  cited  has  sometimes  been  questioned, 
on  the  ground  that  there  was  no  actual  profit  made  by  the 
infringer  in  splitting  the  wood,  and  on  the  contention  that 
he  would  not  have  split  the  wood  at  all,  if  he  had  been 
obliged  to  do  so  otherwise  than  by  the  patented  machine, 
and  that  to  save  a  man  from  a  loss  which  he  would  not  have 
incurred  in  any  event,  is  not  to  confer  a  profit  upon  him, 
and  therefore  that  savings  ought  not  to  be  accounted  as 
profits  except  where  they  result  in  actual  gains.  But  the 
case  as  reported  from  the  Circuit  Court,69  shows  that  the 
defendant  did  continue  to  split  kindling-wood  after  the 
bringing  of  the  suit  caused  him  to  discontinue  the  use  of 
the  complainant's  invention  for  that  purpose.  It  was 
probably  necessary  for  him  to  do  so,  in  order  to  hold  his 
customers  for  other  kinds  of  fuel.  Therefore  the  case  is 
not  a  precedent  for  the  proposition  that  savings  are  profits, 
where  there  was  no  actual  profit  in  the  particular  business 

87  Cawood  Patent,  94  U.  S.  709,  69  Conover  v.  Mevs,  11  Blatch. 
1876.                                                    198, 1873. 

88  Mevs  v.  Conover,  125  U.  S. 
144,  1S76. 


S24  PROFITS  [('UAI'.    XXII. 

in  which  the  complainant's  invention  was  used,  and  where 
there  was  no  reason  why  the  defendant  should  have  pur- 
sued that  business,  if  obliged  to  do  so  at  a  positive  loss. 
It  is  entirely  consistent  with  the  principle  of  the  general 
rule  to  hold  that  savings  are  profits,  only  so  far  as  they 
result  in  affirmative  gains  from  the  particular  business 
in  which  the  infringer  used  the  patented  invention;  unless 
that  particular  business  was  so  necessary  to  the  general 
business  of  the  infringer,  that  he  could  have  afforded  to 
conduct  it  at  an  additional  loss,  at  least  equal  to  the  saving 
he  made  from  the  use  of  the  complainant's  invention,  and 
therefore  presumably  would  have  conducted  it  at  that  loss, 
if  he  had  not  used  that  invention.70 

In  Webster  Loom  Co.  v.  Higgins,71  the  advantage  was 
a  saving  of  machinery  for  weaving  carpets;  it  appearing, 
in  the  aspect  of  the  proofs  most  favorable  to  the  complain- 
ant, that  the  defendants  could  have  made  all  the  carpeting 
they  did  make,  if  instead  of  using  their  sixty-one  infring- 
ing looms,  they  had  used  twice  that  number  of  non-in- 
fringing looms.  On  this  basis,  the  complainant  contended 
that  it  was  entitled  to  recover  all  the  profits  which  were 
made  by  the  defendants,  on  those  yards  of  carpeting  which 
they  made  on  the  sixty-one  infringing  looms,  over  and 
above  the  much  smaller  number  of  yards  which  they  could 
have  made  on  sixty-one  non-infringing  looms.  But  that 
contention  was  overruled  by  the  court,  on  the  ground  that 
nothing  hindered  the  defendants  from  using  one  hundred 
and  twenty-two  non-infringing  looms,  instead  of  sixty-one 
infringing  looms,  and  that  the  cost  of  the  use  of  whatever 
number  of  non-infringing  looms  would  have  been  necessary 
to  make  the  carpeting  which  was  made  on  the  sixty-one 

70  Celluloid  Mfg.  Co.  v.  Cellonite          71  Webster  Loom  Co.   v.   Hig- 
Mfg.   Co.,  40  F.  R.  477,   1889;      gins,  43  F.  R.  675,  1890. 
Turtle  ».Claflin,62  F.R.455, 1894. 


CHAP.     XXFI.]  PROFITS  825 

infringing  looms,  was  the  proper  standard  of  comparison 
in  the  case. 

In  Sessions  v.  Romadka,7-  the  saving  consisted  in  the 
difference  between  the  cost  of  the  patented  trunk  fasteners, 
which  the  defendant  used  in  manufacturing  trunks,  and 
the  greater  cost  of  the  straps,  buckles,  and  dowels  previ- 
ously in  use,  in  the  place  of  those  trunk  fasteners. 

§  731.  The  advantage  referred  to,  consisted  both  in 
affirmative  gains  and  in  savings  from  loss,  in  a  number 
of  important  cases.  In  Tilghman  v.  Proctor,73  it  consisted 
in  savings  of  lime  and  sulphuric  acid;  and  in  gain  on  ac- 
count of  the  increased  value  of  the  glycerine  obtainable 
by  means  of  the  complainant's  invention,  as  compared 
with  that  obtainable  by  other  processes.  In  Wetherill  v. 
Zinc  Co.74  the  advantage  consisted  in  savings  of  coal  and 
labor,  in  producing  zinc  oxide  from  zinc  ore,  as  compared 
with  the  cheapest  prior  process  of  producing  the  same 
quantity  of  zinc  oxide  from  the  same  kind  of  zinc  ore. 

§  732.  The  standard  of  comparison  set  up  by  a  defend- 
ant needs  not  to  have  been  used  by  him  at  any  time,75 
and  where  it  never  was  so  used,  the  evidence  of  its  utility, 
as  compared  with  the  invention  in  suit,  may  be  drawn 
from  persons  who  have  used  the  two  under  the  same 
conditions; 76  or  from  any  other  source  which  is  capable 
of  furnishing  convincing  evidence  upon  the  point.  And 
even  where  the  defendants  have  used  the  standard  of 
comparison,  they  may  show  that  it  was  used  with  better 
results  by  others,  and  may  have  the  benefit  of  that  su- 
periority on  the  accounting.77 

"Sessions    v.    Romadka,     145  7S  Locomotive  Safety  Truck  Co. 

U.  S.  45,  1892.  v.  Railroad  Co.,  2  F.  R.  679,  1880. 

73  Tilghman  v.  Proctor,  125  76  Emigh  v.  Railroad  Co.,  0  F.  R. 
U.  S.  142,  1888.  283,  1881. 

74  Wetherill  v.  Zinc  Co.,  1  Bann.  77  Tilghman  v.  Proctor,  125  U.  S. 
&  Ard.  486,  1874.  150,  1888;  but  see  Morgan  Con- 


826  PROFITS  [chap.   XXII. 

§  734.  To  determine  what  is  the  proper  standard  of  com- 
parison in  a  particular  case,  it  is  not  necessary  for  the  com- 
plainant to  affirmatively  prove  that  a  particular  process  or 
thing  was  absolutely  the  next  best  to  his  invention,  at  the 
time  of  the  infringement.  Such  a  requirement  would  not 
be  reasonable,  because  it  could  never  be  performed.  It 
would  involve  evidence  enough  to  negative  the  existence 
of  a  better  process  or  thing  than  the  one  fixed  upon;  and 
to  prove  that  nothing  better  existed  anywhere,  would  be 
impossible.  The  regular  course  of  practice  on  the  point 
is  for  the  complainant  to  select  what  appears  to  him  to 
be  the  proper  standard  of  comparison,  and  to  produce 
evidence  to  prove  what  advantage  the  defendant  de- 
rived from  using  the  complainant's  invention,  over 
what  he  could  have  derived  from  using  the  standard  so 
selected. 

Where  the  defendant  knows  of  no  standard  of  com- 
parison more  favorable  to  himself  than  the  one  selected 
by  the  complainant,  the  only  remaining  issue  relates  to 
the  utility  and  cheapness  of  that  standard,  as  compared 
with  the  complainant's  invention.78  Where  the  defendant 
is  not  satisfied  that  the  complainant  has  made  the  proper 
selection  of  a  standard  of  comparison,  he  may  select  an- 
other, and  may  produce  evidence  to  show  its  utility  and 
cheapness  as  compared  with  that  of  the  invention  covered 
by  the  patent  in  suit;  and  when  the  case  comes  to  a 
hearing  before  the  master,  the  first  question  to  be  decided 
by  him  will  be  as  to  which  of  the  parties  has  made  the 
proper  selection,  and  that  standard  will  be  used  in  the  ac- 
counting, whether  it  was  selected  by  the  complainant  or 
by  the  defendant;  and  all  evidence  about  the  merits  of 

struction    Co.    v.    Forter-Miller  78  Emigh  v.  Railroad  Co.,  6  F.  R. 

Engineering  Co.,  234  F.  R.  324,      285,  1881. 

1916. 


CHAP.    XXII.]  PROFITS  827 

the  other  proposed  standard  will  become  and  remain 
immaterial  to  the  case.79 

The  true  standard  of  comparison  in  a  particular  case  is 
that  prior  process  or  thing  which,  next  to  the  complain- 
ant's invention,  could  have  been  most  advantageously- 
used  by  the  defendant  in  place  of  that  invention,  at  the 
time  he  used  the  latter.80  To  determine  this  point,  com- 
parative utility  is  one  guide,  but  regard  must  also  be  had 
to  comparative  cost,  for  the  advantage  contemplated  by 
the  general  rule  of  Section  725  is  the  equalized  result  of 
both  these  elements.81 

§  734a.  Where  the  machine  used  by  the  defendant, 
differed  from  the  patented  invention,  only  in  the  substi- 
tution of  equivalents,  the  defendant's  machine  is  treated, 
in  respect  of  profits,  as  if  it  were  the  unchanged  invention 
of  the  complainant;  but  where  the  defendant's  machine 
contained  an  improvement  upon  the  complainant's  in- 
vention, the  defendant  is  entitled  to  be  credited  with  what- 
ever contribution  that  improvement  made  to  the  profit 
realized  from  the  defendant's  use  of  the  entire  machine.82 
This  rule  applies  to  accountings  for  profits  derived  from 
infringing  patents  on  processes  or  other  subjects  of  patents, 
as  well  as  to  profits  derived  from  infringing  patents  on 
machines. 

§  735.  The  rule  of  Section  725  has  no  application  to 
those  cases  of  infringement  which  consist  in  making  and 
selling  a  patented  article,  or  in  the  latter  of  those  acts  alone; 

79  Webster  Loom  Co.  v.  Higgins,  Iron  Co.  v.  Carnegie  Steel  Co., 
39  F.  R.  465,  1889.  224  F.  R.  947,  1915. 

80  Brown  v.  Lanyon,  179  F.  R.  "Brickill  v.  New  York,  112 
309,  1910;  Columbia  Wire  Co.  v.  F.  R.  71,  1901. 

Kokomo  Steel  &  Wire  Co.,  194  82  Tuttle  v.  Claflin,  76  F .  R.  233, 

F.  R.  108,  1911;  Schmerz  Wire  1896. 

Glass  Co.  v.  Western  Glass  Co.,  See  Section  719. 

203  F.  R.   1006,   1913;  Cambria 


828  PROFITS  [CHAP.    XXII. 

except  where  a  patented  article  is  used  as  a  component  part 
of  a  much  larger  article  which  is  made  and  sold  by  the 
infringer.8'5  In  Elizabeth  v.  Pavement  Co.  the  infringe- 
ment consisted  only  in  making  the  patented  pavement 
to  order;  that  is  to  say,  it  consisted  in  making  and  selling 
the  patented  article.  The  defendants  sought  to  have  the 
profits  determined,  under  the  rule  of  Section  725,  by  set- 
ting up  other  pavements  as  standards  of  comparison,  but 
the  Supreme  Court  held  then  position  on  the  point  to  be 
without  foundation.81  The  same  rule  was  also  unsuccess- 
fully invoked  in  the  case  of  Burdett  v.  Estey,  though  the 
argument  in  favor  of  its  application  was  supported  by 
evidence  that  the  defendant  might  have  made  and  sold 
a  different  device,  at  nearly  or  quite  the  same  profit  that 
he  derived  from  making  and  selling  the  device  covered  by 
the  complainant's  patent.85 

§  736.  Interest  on  infringer's  profits  is  allowed  from  the 
date  of  the  master's  report,  which  ascertains  the  amount  of 
those  profits; 86  or  from  the  date  of  their  first  judicial  as- 
certainment, in  cases  where  they  are  first  ascertained  by 
the  court.87    Interest  is  in  the  discretion  of  the  court.88 

§  739.  After  an  interlocutory  decree  is  entered,  direct- 
ing a  master  commissioner  of  the  court  to  take  and  report 
an  account  of  the  defendant's  profits,  or  appointing  a 
master  pro  hac  vice  for  that  purpose,  it  becomes  the  business 
of  the  complainant  to  introduce  evidence  before  such  mas- 

83  Sessions  v.  Romadka,  145  1891;  National  Folding  Box  Co.  v. 
U.  S.  48,  1892.  Dayton  Paper  Novelty  Co.,  97 

84  Elizabeth  v.  Pavement  Co.,      F.  R.  331,  1899. 

97  U.  S.  141,  1877.  87  Campbell  v.  New  York,  105 

85  Burdett  v.  Estey,  3  F.  R.  569,  F.  R.  631,  1900;  Western  Glass 
1880.  Co.  v.  Schmertz  Wire  Glass  Co., 

88  Tilghman  v.  Proctor,  125  U.  S.      226  F.  R.  730,  1915. 
160,  1887;  Crosby  Valve  Co.  v.         88  Cambria  Iron  Co.  v.  Carnegie 
Safety  Valve  Co.,  141  U.  S.  457,      Steel  Co.,  224  F.  R.  947,  1915. 


CHAP.    XXII.]  PROFITS  829 

ter  to  prove  the  amount  of  those  profits.  The  complain- 
ant must  take  the  initiative.  It  is  not  the  province  of  the 
master  to  suggest  any  line  of  proof  or  theory  of  accounting. 
His  function  is  to  pass  upon  whatever  evidence  the  com- 
plainant produces,  in  the  light  of  whatever  is  produced 
by  the  defendant.89  Each  party  must  in  the  first  instance 
pay  the  costs  and  expenses  made  by  himself,  including 
fees  of  the  master  and  stenographer,90  and  must  be  borne 
by  the  defendant  in  the  final  taxation  of  costs,  if  he  is  finally 
defeated,91  but  must  be  borne  by  the  complainant  if  the 
bill  is  finally  dismissed.92 

Equity  Rule  63  (former  Equity  Rule  79)  provides  that 
"all  parties  accounting  before  a  master  shall  bring  in  then- 
respective  accounts  in  the  form  of  debtor  and  creditor; 
and  any  of  the  other  parties  who  shall  not  be  satisfied 
with  the  accounts  so  brought  in  shall  be  at  liberty  to  ex- 
amine the  accounting  party  viva  voce,  or  upon  interroga- 
tories as  the  master  shall  direct."  It  is  customary,  at 
the  commencement  of  accounts,  for  the  master  to  issue  a 
summons  directing  the  defendant  to  bring  in  a  sworn  state- 
ment of  the  infringing  devices  which  have  been  manufac- 
tured and  sold  by  him,  together  with  other  data  which  will 
enable  the  plaintiff  to  establish  his  case.  The  validity  of 
this  practice  has,  however,  been  doubted,  but  was  consid- 
ered favorably  in  the  Matter  of  Beckwith,  by  the  Circuit 
Court  of  Appeals  of  the  seventh  circuit.93  Objection  was 
taken  on  the  ground  that  a  statement  of  profits  by  an  in- 
fringing defendant  was  incapable  of  being  put  in  the  form 

89  Garretson  v.  Clark,  4  Baiin.  &  92  American  Diamond  Drill  Co. 
Ard.  537,  1879.  v.  Machine  Co.,  32  F.  R.  552, 

90  Panoulias  v.  National  Equip-      1885. 

raent  Co.,  227  F.  R.  1008,  1915.  93  In   re  Beckwith,  203  F.  R. 

91Urner  v.   Kayton,   17  F.   R.      45,  1913. 
539,  845,  1883. 


830  PROFITS  [chap.   XXII. 

of  debtor  and  creditor,  but  the  Court  of  Appeals  said: 
••  Nevertheless  they  are  plainly  capable  of  specification  in 
theform  of  debit  sand  credits  for  the  purpose  of  accounting, 
and  tin-  complications  mentioned,  together  with  the  fact 
that  the  items  are  within  the  exclusive  knowledge  and  pos- 
session of  the  defendant  furnish  ample  ground  for  such 
specification  in  conformity  with  the  equity  rule.  It  can- 
not reasonably  be  assumed  that  these  items  entering  into 
the  cost  appear  in  detail  in  the  ordinary  books  of  account ; 
but  in  whatever  form  the  information  is  preserved  or  may 
be  obtained  by  the  manufacturer,  we  believe  it  to  be  both 
the  purpose  of  the  rule  and  in  accord  with  equity,  to  re- 
quire the  defendant,  at  the  outset  of  the  accounting,  to 
make  the  needful  investigation  and  state  the  items  in 
detail— having  effect,  as  well,  of  his  admissions  of  fact 
and  of  statements  under  oath — and  thus  perform  his 
just  part  in  narrowing  the  issue  upon  the  accounting  to 
items  and  matters  which  are  in  actual  controversy  between 
the  parties." 

In  Beckwith  v.  Malleable  Iron  Range  Co.,94  the  practice 
governing  the  proceedings  on  accounting  before  the  master 
is  reviewed  and  the  scope  of  the  master's  investigation 
defined,  the  court  holding  that  it  is  improper  in  advance 
of  the  submission  of  the  account  to  compel  the  defendant 
to  furnish  detailed  calculations  the  effect  of  which  would 
be  evidential  only  and  restricting  the  scope  of  the  require- 
ments of  the  summons  to  an  account  in  debtor  and  cred- 
itor form,  exhibiting  the  matters  which  were  the  subject 
of  the  accounting,  namely,  on  the  one  hand  the  sums 
chargeable,  the  manufacture  and  sales,  the  amounts  re- 
ceived, and  on  the  other  hand  the  items  of  credit  or  offset 
such  as  cost  of  material,  manufacture  of  the  goods  and  the 
like.    The  object  was  said  to  be  to  give  the  plaintiff  an 

m  Beckwith  v.  Malleable  Iron  Range  Co.,  207  F.  R.  848,  1913. 


CHAP.    XXII.]  PROFITS  831 

opportunity  of  taking  exception  to  items  appearing  in 
the  account  and  to  thus  limit  the  scope  of  the  investiga- 
tion to  contested  matters,  the  reason  being  given  that  it 
could  not  be  presumed  in  advance  that  the  account  when 
filed  would  be  disputed  or  would  give  rise  to  dissatisfaction. 

§  740.  The  evidence  upon  which  the  master  may  base 
his  report,  may  consist  of  any  evidence  taken  in  the  case 
prior  to  the  interlocutory  decree,95  and  of  documents 
introduced,  and  depositions  taken,  by  the  parties  for  the 
express  purpose  of  the  accounting,  and  of  testimony  taken 
viva  voce  in  the  presence  of  the  master,96  anywhere  in  the 
world,97  and  of  personal  examination  by  him  of  the  struc- 
ture or  processes  which  are  involved  in  the  questions  before 
him.98  If  the  required  documents  are  not  produced  vol- 
untarily, the  master  may  require  their  production ;  and  any 
necessary  depositions  may  be  taken  upon  commissions  to 
be  issued  upon  his  certificate,  from  the  clerk's  office,  or 
they  may  be  taken  according  to  the  acts  of  Congress.99 

When  testimony  is  taken  viva  voce  before  a  master, 
either  party  may  require  that  it  be  taken  down  in  writing, 
in  order  that,  if  necessary,  it  may  be  used  by  the  court.100 
In  the  use  of  books  and  papers  of  the  defendant  the  master 
of  course  as  in  all  other  cases  will  give  due  consideration 
to  the  rights  which  the  defendant  has  that  his  books  and 
papers  be  subjected  to  scrutiny  only  so  far  as  they  are 
material  to  the  issues.101  In  the  course  of  an  accounting 
before  a  master,  that  officer  has  full  authority  to  do  all 
acts  and  to  direct  all  proceedings  which  he  may  deem  neces- 

95  Equity     Rule    SO;     Bell    v.  "Equity     Rule     77;     Revised 

Stamping  Co.,  32  F.  R.  549,  1887.  Statutes,  Sections  863,  864,  and 

ra  Equity  Rule  77.  865;  Section  535  of  this  book. 

97  Bate  Refrigerating  Co.  v.  10°  Rollman  Mfg.  Co.  v.  Univer- 
Gillette,  28  F.  R.  673,  1886.  sal  Hardware  Works,  218  F.  R. 

98  Piper   v.   Brown,    1   Holmes,  651,  1914. 

198,  1873.  101  Equity  Rule  81. 


832  PROFITS  [chap.   XXII. 

sary  unci  proper  to  the  justice  and  merits  of  the  case.102 
[f,  for  example,  an  account  to  be  transcribed  or  deduced 
from  the  defendant's  books,  is  necessary  to  a  just  de- 
cision of  the  cause,  the  master  may  make  an  order  that  the 
defendant  furnish  such  an  account  by  a  certain  day;  and 
such  an  order,  when  served  on  the  defendant  by  any  dis- 
interested person,  must  be  obeyed,  or  the  defendant  will 
be  guilty  of  contempt  of  court  for  not  obeying  it.103 

§  741.  Objections  to  evidence,  in  order  to  be  availing, 
must  be  made  when  the  objectionable  piece  of  evidence  is 
offered,  or  the  objectionable  question  is  put,  or  the  objec- 
tionable answer  is  given.  If  the  master  is  present  at  the 
time,  he  ought  to  rule  upon  the  objection  at  once,  and  if 
either  party  would  appeal  from  that  ruling,  he  must  enter 
an  immediate  objection  thereto. 

If  the  ruling  is  against  the  evidence  objected  to,  it  is 
necessary  for  the  party  who  offers  the  evidence,  if  he  would 
appeal  from  the  ruling,  to  do  so  by  an  immediate  motion  to 
the  court  to  direct  the  master  to  reverse  his  decision  upon 
the  point.104  The  reason  for  this  practice  is  that  if  such  an 
appeal  could  be  taken  in  an  exception  to  the  master's 
report,  it  would,  when  taken  successfully,  necessitate  a 
recommittal  of  the  case  to  the  master,  in  order  to  enable 
him  to  admit  the  evidence  which  he  erroneously  rejected. 

If  the  master's  ruling  is  in  favor  of  the  evidence  objected 
to,  that  evidence  will  of  course  be  admitted  subject  to  the 
objection,  and  that  ruling  may  be  reviewed  by  the  court  on 
exceptions  to  the  report  of  the  master,  as  well  as  by  means 
of  an  immediate  motion.  It  may  be  reviewed  on  excep- 
tions, because,  if  it  is  reversed,  that  reversal  will  not  neces- 
sitate any  addition  to  the  evidence  before  the  court,  but 

102  Equity  Rule  77.  104  Celluloid   Mfg.    Co.  v.  Cel- 

103  Kerosene  Lamp  Heater  Co.  v.  lonite  Mfg.  Co.,  40  F.  R.  477, 
Fisher,  5  Bann.  &  Ard.  79,  1880.      1889. 


CHAP.    XXII.]  PROFITS  833 

will  merely  cause  the  court  to  eliminate  the  objectionable 
evidence  from  among  the  factors  of  the  problems  before  it. 

If  the  master  is  not  present  when  the  cause  of  an  objec- 
tion arises,  the  practice  is  for  the  notary  or  other  magis- 
trate who  is  taking  the  deposition,  to  note  the  objections 
thereon,  and  to  take  down  the  evidence  objected  to;  for 
he  has  no  authoirty  to  make  any  ruling.  In  such  cases 
the  objections  which  are  noted  upon  the  depositions,  may 
be  brought  to  the  attention  of  the  master  on  the  argument 
before  him,  and  his  specific  rulings  thereon  may  be  re- 
quired, and  those  rulings  may  be  reviewed  by  the  court, 
on  exceptions  to  the  report  of  the  master,  as  far  as  they  have 
affected  that  report.  Most  of  the  points  stated  in  this 
section  are  contained  in  an  excellent  decision  of  Judge 
W.  D.  Shipman,105  and  the  residue  are  deducible  from 
that  decision,  or  from  plain  principles  of  practice. 

§  742.  The  extent  of  the  defendant's  infringement  must 
be  determined  by  the  master  in  order  to  enable  him  to 
ascertain  the  amount  of  the  profits  which  the  defendant 
derived  from  that  infringement.  Where  the  infringement 
was  all  alike,  or  where  the  interlocutory  decree  specifies 
the  particular  doings  of  the  defendant  which  are  to  be 
accounted  for  as  infringements,  the  only  question  for  the 
master  to  decide  on  this  point  is  a  question  of  quantity. 
But  where  the  interlocutory  decree  merely  directs  the  mas- 
ter to  take  and  report  an  account  of  the  profits  which  the 
defendant  derived  from  infringing  the  complainant's 
patent,  and  where  the  complainant  claims  that  certain 
doings  of  the  defendant  which  were  not  proved  prior  to  the 
interlocutory  decree,  constitute  such  an  infringement, 
it  becomes  the  duty  of  the  master  to  decide  the  question 
of  infringement  involved.106 

105  Troy  Iron  &  Nail  Factory  v.  m  Knox  v.  Quicksilver  Mining 

Corning,  6  Blatch.  333,  1869.  Co.,  6  Sawyer,  436,   1878;  Ball 


s:;i  PROMTS  [chap.   XXII. 

Nor  would  it  be  unprecedented  for  a  court,  when  direct- 
ing a  master  to  take  and  report  an  account  of  infringer's 

profits,  to  direct  him  also  to  decide  and  report  which  of 
various  machines  used  by  the  defendant,  were  infringe- 
ments of  the  complainant's  patent,  and  to  make  up  his 
account  accordingly,107  or  for  the  master  to  spontaneously 
report  upon  a  form  of  infringement  which  was  not  pre- 
viously before  the  court.108  In  fact  such  is  the  rule  at  any 
rate  in  the  second  circuit 109  and  in  the  first  circuit.110 
But  the  most  convenient  and  least  expensive  practice  is 
for  the  court  to  decide  all  questions  of  infringement,  be- 
fore entering  an  interlocutory  decree.  In  some  jurisdic- 
tions it  is  held  to  be  the  only  proper  practice  to  bring  in 
all  additional  infringements  by  supplemental  bill.111 

§  743.  Where  the  alleged  infringements  involved  in  a 
suit,  are  of  several  sorts,  the  master  generally  ought  to 
report  in  a  separate  item  the  profits  due  to  each  kind;  so 
that  the  District  Court  on  exceptions,  or  a  higher  court 
on  an  appeal,  may  render  a  decree  for  part  or  for  all  of 
those  items,  according  to  its  decision  upon  the  questions 
of  infringement  involved.  This  is  but  a  rule  of  conven- 
ience, and  may  be  departed  from  when  convenience  would 
thus  be  better  served.  Where  the  defendant  used  two  dif- 
ferent sorts  of  machines,  both  of  which  the  complainant 

Glove   Fastening   Co.    v.   Socket  Filling  Mach.  Co.  v.  Drohen,  171 

Fastener  Co.,  53  F.  R.  245,  1892;  F.  R.  438,  1909. 

Fenton    Metallic    Mfg.    Co.    v.  See  Sections  625  and  708. 

Office  Specialty  Co.,  12  App.  D.  C.  109  Louis    Metzger    &    Co.    v. 

221,  1898;  Hoe  v.  Scott,  87  F.  R.  Berlin,  194  F.  R.  426,  1912. 

220,  1898.  See  Sections  625  and  708. 

107  Cawood  Patent,  94  U.  S.  uo  L.  S.  Starrett  Co.  v.  Brown 
708,  1876.  &  Sharpe  Mfg.  Co.,  208  F.  R. 

108  Adams  v.  Keystone  Mfg.  Co.,  887,  1913. 

41  F.  R.  596,  1890;  Walker  Pat-         See  Sections  625  and  708. 
ented  Pivoted  Bin  Co.  v.  Miller,  1U  Murray   v.   Orr   &   Lockett 

146  F.  R.  249,  1906;  Brown  Bag-      Hardware  Co.,  153  F.  R.369, 1907. 


CHAP.    XXII.]  PROFITS  835 

claims  infringe  his  patent,  if  the  points  upon  which  those 
questions  of  infringement  depend,  are  apparently  the  same 
in  both  cases,  and  if  the  two  sorts  of  machines  were  so  used 
by  the  defendant,  that  it  would  be  difficult  to  separate 
the  profits  derived  from  the  use  of  one  from  those  flowing 
from  the  use  of  the  other,  it  will  be  most  convenient  not 
to  attempt  to  do  so.  In  such  a  case  there  is  but  little 
probability  that  the  courts  will  hold  one  of  the  two  sorts 
of  machines  to  infringe,  while  holding  that  the  other  does 
not,  and  there  is  correspondingly  little  probability  that  a 
necessity  will  arise  for  a  division  of  the  profits  due  to  the 
use  of  the  two  kinds. 

§  744.  A  draft  report  of  a  mastery  in  chancery,  is  one 
which  the  master  draws  up  after  the  testimony  has  all  been 
taken,  and  the  parties  have  been  heard  in  argument  on 
that  testimony,  and  the  master  has  formed  an  opinion  on 
the  questions  involved  in  the  reference  before  him.  Such 
a  report  is  requisite  to  enable  the  parties  to  correct  any 
misapprehension  into  which  the  master  may  have  fallen, 
without  the  alternative  necessity  of  presenting  the  point 
to  the  court.  When  completed,  such  a  report  is  either 
filed  in  the  case,  or  served  on  the  parties  or  their  solicitors; 
and  it  thereupon  devolves  upon  any  party  who  is  dissatis- 
fied with  the  master's  finding,  to  file  such  exceptions  to  his 
draft  report,  as  will  call  his  attention  to  each  alleged  error 
of  which  the  dissatisfied  party  proposes  to  complain. n- 
It  then  becomes  the  duty  of  the  master  to  consider  or  re- 
consider the  questions  involved  in  those  exceptions,  and 
thereupon  to  prepare  and  file  his  final  report  in  the  case. 

The  final  report  will  be  identical  with  the  draft  report, 
if  the  consideration  of  the  exceptions  to  the  earlier  docu- 
ment fails  to  convince  the  master  that  it  was  wrong ;  but  if 
he  is  so  convinced,  he  will  concert  his  final  report  in  such 

112  Fischer  v.  Hayes,  16  F.  li.4469,  1883. 


836  PROFITS  [chap.   XXII. 

a  manner  as  to  make  it  embody  his  changed  opinion.118 

No  new  evidence  can  be  introduced  before  a  muster  after 
he  has  made  his  draft  report; lu  the  proceedings  upon  ex- 
ceptions thereto,  being  in  the  nature  of  a  rehearing  for 
errors  apparent  on  the  face  of  the  record.  According  to 
strict  equity  practice,  it  is  necessary  to  give  a  master  this 
opportunity  to  correct  his  findings,  in  order  to  save  time 
and  labor  of  the  judge.11"  This  point  of  practice  has  some- 
times been  omitted  by  counsel  in  patent  cases,  and  its 
omission  been  condoned  by  opposing  counsel  or  by  the 
court.116  But  it  is  not  safe  to  omit  the  filing  of  such  ex- 
ceptions with  the  master,  for  the  rule  which  requires  them, 
is  always  liable  to  be  enforced,  and  the  enforcement  con- 
sists in  the  court  disregarding  every  exception  to  a  master's 
final  report,  which  was  not  taken  before  the  master  him- 
self, by  way  of  exceptions  to  his  draft  report.117 

A  final  report  of  a  master  is  advisory  to  the  court;  118 
but  its  advice  is  confined  to  the  points  which  the  interloc- 
utory decree  directed  him  to  ascertain,  and  may  not 
properly  include  any  criticism  of  that  decree,  or  any  sug- 
gestion of  any  judicial  action  to  be  taken  relevant  to  the 
report.119  Though  the  conclusions  of  fact  stated  in  the 
final  report  of  a  master  will  not  be  reviewed  otherwise 
than  on  exceptions  thereto,120  its  conclusions  of  law  will 

113  Sugar  Refinery  Co.  v.  m  McMickin  v.  Perin,  18  How- 
Mathiesson,  3  Cliff.  149,  1868;  ard,  510,  1855;  Troy  Iron  &  Nail 
Troy  Iron  &  Nail  Factory  v.  Factory  v.  Corning,  6  Blatch.  333, 
Corning,  6  Blatch.  332,  1869.  1869;  Celluloid  Mfg.  Co.  v.  Cello- 

114  Piper  v.  Brown,  1  Holmes,  nite  Mfg.  Co.,  40  F.  R.  476,  1889. 
196,  1873.  118  Boesch  v.  Graff,  133  U.  8. 

115  Story     v.     Livingston,     13  705,1890. 

Peters,  366,  1839;  Topliff  v.  Top-          119  Jennings    v.    Rogers    Silver 

liff,  145  U.  S.  172,  1892.  Plate  Co.,  118  F.  R.  340,  1902. 

116  Fischer  v.  Hayes,  16  F.  R.  120  Topliff  v.  Topliff,  145  U.  S. 
469,  1883;  Jennings  v.  Dolan,  29  172,  1892. 

F.  R.  861,  1887. 


CHAP.    XXII.]  PROFITS  837 

be  verified  or  corrected  by  the  court,  before  any  final  de- 
cree is  based  thereon.121 

§  745.  Exceptions  to  masters'  reports  ought  to  be  aimed 
with  precision  at  the  errors  which  such  reports  are  alleged 
to  contain.122  Such  exceptions  may  be  filed  by  the  com- 
plainant, if  he  thinks  that  the  master  has  erred  in  not 
finding  any  profits,  or  in  not  finding  any  damages,  or  in 
finding  either  of  those  foundations  of  recovery  to  have  been 
smaller  than  the  evidence  would  warrant ;  and  such  excep- 
tions may  be  filed  hf  the  defendant,  if  he  thinks  that  the 
master  erred  in  finding  profits  or  in  finding  damages  to  an 
amount  in  excess  of  what  the  evidence  can  sustain. 

§  746.  Defendants'  exceptions  to  masters'  reports  are 
divisible  into  four  classes.  1.  Exceptions  which  state  that 
there  is  evidence  in  the  case,  proving  that  the  defendant 
derived  no  profit,  and  that  the  complainant  sustained  no 
damage,  on  account  of  the  infringement.  2.  Exceptions 
which  state  that  there  is  evidence  in  the  case  proving  that 
the  master's  finding  of  profits  or  of  damages,  is  too  large 
in  amount.  3.  Exceptions  which  deny  that  there  is  any 
admissible  evidence  in  the  case  proving  that  the  defendant 
derived  profit,  or  that  the  complainant  sustained  damage, 
on  account  of  the  infringement.  4.  Exceptions  which 
deny  that  there  is  any  admissible  evidence  in  the  case  prov- 
ing that  the  defendant  derived  profit,  or  that  the  com- 
plainant sustained  damage,  on  account  of  the  infringement, 
to  so  great  an  amount  as  the  master  reported. 

The  first  two  of  these  classes  of  exceptions  rely  upon 
affirmations,  and  the  last  two  rely  upon  negations,  of 
definite  points  of  fact.  For  the  purposes  of  the  present 
explanation,  the  four  classes  may  be  treated  in  two  groups: 

121  Celluloid  Mfg.  Co.  v.   Cel-  '"  Sheffield  Ry.  Co.  v.  Gordon, 

lonite  Mfg.   Co.,  40  F.  R.  477,      151  U.  S.  290,  1894. 

1S89. 


838  PROFITS  [chap.    XXII. 

those  which  are  affirmative  requiring  one  sort  of  manage- 
ment in  practice,  and  those  which  are  negative  requiring 
another. 

§747.  Defendant's  affirmative  exceptions  to  a  draft 
report,  must  specify  the  particular  evidence  upon  which 
they  are  respectively  based.  If  this  rule  were  otherwise, 
such  an  exception  would  not  point  out  error,  and  would 
therefore  fail  to  perform  its  only  function.  Defendant's 
affirmative  exceptions  to  a  final  report,  must  be  supported 
by  reference  to  the  particular  evidence  upon  which  the 
exceptor  relies;  or  by  such  special  statements  of  the  master, 
as  justify  the  exceptor  in  affirming  the  existence  of  the 
particular  facts  upon  which  he  relies  to  support  sUch  ex- 
ceptions. Were  the  court  required  to  wander  at  large  into 
the  evidence  which  was  before  the  master,  the  reference 
to  him  would  be  of  little  value.  Indeed  that  evidence 
need  not  be  reported,  further  than  it  is  relied  upon  to  sup- 
port, explain,  or  oppose  a  particular  exception; 123  and 
there  is  no  presumption  in  any  case,  in  the  absence  of  a 
certificate,  that  the  master  reported  to  the  court  all  the 
evidence  which  was  before  him.124 

§  748.  Defendant's  negative  exceptions  are  those  which 
call  in  question  the  admissibility  of  the  evidence  upon 
which  the  master  based  his  finding,  and  those  which  deny 
the  presence  in  the  record  of  any  evidence  sufficient  to 
support  that  conclusion.  An  exception  of  the  first  of  these 
sorts,  so  far  partakes  of  the  nature  of  an  affirmative  ex- 
ception, that  it  ought  to  specify  the  particular  evidence 
objected  to,  so  that  the  master,  on  exceptions  to  his  draft 
report,  or  the  court,  on  exceptions  to  the  final  report  of 
the  master,  may  have  a  precise  issue  in  the  law  of  evidence 
presented  for  decision.    But  an  exception  of  the  second 

123  Harding      v.      Handy,      11  124  Sheffield  Ry.  Co.  v.  Gordon, 

Wheaton,  126,  1826.  151  U.  S.  293,  1894. 


CHAP.   XXII.]  PROFITS  839 

of  these  kinds  cannot  be  expected  to  specify  any  particular 
evidence,  because  it  assumes  that  there  is  none  in  the  rec- 
ord. In  such  a  case,  the  proper  practice  is  for  the  excep- 
tor to  require  the  master  to  make  a  special  statement, 
in  his  final  report,  of  the  particular  evidence  which  con- 
vinced his  judgment,  and  to  transmit  that  evidence  with 
his  report  into  court.125 

§  749.  Complainants'  exceptions  to  a  master's  report 
may  be  of  two  classes.  1.  Exceptions  which  state  that 
there  is  evidence  in  the  case  proving  that  the  defendant 
derived  larger  profits,  or  that  the  complainant  sustained 
larger  damages  than  the  master  reported.  2.  Exceptions 
which  state  that  the  master  erred  in  admitting  inadmissi- 
ble evidence.  Both  of  these  sorts  are  affirmative  in  their 
nature,  and  when  made  to  a  draft  report,  must  therefore 
be  supported  by  references  to  the  particular  evidence 
upon  which  the  exceptor  relies,  or  by  reference  to  the  par- 
ticular evidence  which  he  claims  was  improperly  admitted 
against  his  objection,  as  the  case  may  happen  to  require. 
When  made  to  a  final  report,  a  complainant's  exceptions, 
like  the  affirmative  exceptions  of  a  defendant,  must  be 
supported  either  by  references  to  the  particular  evidence 
involved,  or  be  based  upon  such  special  statements  of  the 
master  as  will  obviate  that  necessity. 

§  750.  The  system  of  practice  relevant  to  a  master's 
finding,  appears  to  present  the  following  outlines,  when 
reviewed  as  a  whole.  It  is  a  master's  function  to  investi- 
gate the  questions  which  are  referred  to  him  by  the  court, 
and  to  investigate  no  others.  To  that  end,  he  takes  testi- 
mony and  receives  other  evidence,  and  decides  what  con- 
clusions are  justified  thereby;  and  those  conclusions  will 

125  In    re    Hemiup,     3     Paige      Commander-in-Chief,   1  Wallace, 
(N.    Y.),    307,    1832;    Greene   v.      50,  1863. 
Bishop,   1  Cliff.    195,   1858;  The 


840  PROFITS  [chap.    XXII. 

stand  unless  they  are  clearly  erroneous.128  Unless  the 
court  otherwise  directs,  the  master's  draft  report  should 
contain  those  conclusions  alone;  and  his  final  report  should 
contain  only  his  final  conclusions,  together  with  such  state- 
ments of  fad  and  statements  and  pieces  of  evidence  us 
the  parties  lawfully  require  him  to  attach  thereto.  Where 
the  exceptions  to  the  draft  report  involve  no  issue  save 
such  as  pertain  to  the  admissibility  of  particular  evidence, 
nothing  need  accompany  the  final  report  except  the  evi- 
dence objected  to,  and  a  statement  of  the  ground  upon 
which  it  was  admitted.  Where  those  exceptions  merely 
affirm  the  presence  of  evidence  requiring  a  different  con- 
clusion from  that  of  the  master,  nothing  need  accompany 
the  final  report  save  the  particular  evidence  which  those 
exceptions  specify  in  that  behalf.  Where  those  excep- 
tions merely  deny  the  presence  of  evidence  to  justify  the 
draft  report,  nothing  need  accompany  the  final  report 
save  the  evidence  which  carried  the  master  to  the  conclu- 
sion at  which  he  arrived.  Where  a  master  receives  no 
direction  from  the  court,  and  no  request  from  either  of 
the  parties,  to  report  any  evidence,  his  report  contains 
nothing  but  his  finding,  and  his  finding  is  conclusive.127 

126  Tilghman  v.  Proctor,  125  1848;  Adams  v.  Brown,  7  Cashing 
U.  S.  149,  1887;  Callaghan  v.  (Mass.),  222,  1851;  Howe  v. 
Myers,  128  U.  S.  666,  1888;  Kim-  Russell,  36  Maine,  127,  1853; 
berlyfl.Arms,  129  U.S.  512,  1889.  Sparhawk     v.     Wills,     5     Gray 

127  Harding  v.  Handy,  11  (Mass.),  431,  1855;  Greene  r. 
Wheaton,  126,  1826;  The  Com-  Bishop,  1  Cliff.  195,  1858;  Mason 
mander-in-Chief,  1  Wallace,  50,  v.  Railroad  Co.,  52  Maine,  11"), 
1863;  In  re  Hemiup,  3  Paige  1861;  Piper  v.  Brown,  1  Holmes, 
(N.  Y.),  307,  1832;  Dexter  v.  198,  1873;  Hammacher  v.  Wilson. 
Arnold,  2  Sumner,  131,  1834;  32  F.  R.  797,  1887;  Keep  p. 
Donnell  v.  Insurance  Co.,  2  Sum-  Fuller,  42  F.  R.  896,  1890;  Roll- 
ner,  371,  1836;  Boston  Iron  Co.  man  Mfg.  Co.  v.  Universal  Hard- 
v.  King,  2  Cushing  (Mass.),  405,  ware  Works,  229  F.  R.  579,  1916. 


APPENDIX 
THE  PATENT  STATUTES 

PATENT  ACT  OF  1790 

1  Statutes  at  Large,  109 

An  Act  to  promote  the  progress  of  useful  Arts 

Section  1 .  Be  it  enacted  by  the  Senate  and  House  of  Rep- 
resentatives of  the  United  States  of  America  in  Congress 
assembled,  That  upon  the  petition  of  any  person  or  persons 
to  the  Secretary  of  State,  the  Secretary  for  the  Depart- 
ment of  War,  and  the  Attorney-General  of  the  United 
States,  setting  forth  that  he,  she,  or  they  hath  or  have 
invented  or  discovered  any  useful  art,  manufacture,  en- 
gine, machine,  or  device,  or  any  improvement  therein  not 
before  known  or  used,  and  praying  that  a  patent  may  be 
granted  therefor,  it  shall  and  may  be  lawful  to  and  for  the 
said  Secretary  of  State,  the  Secretary  for  the  Department 
of  War,  and  the  Attorney-General,  or  any  two  of  them,  if 
they  shall  deem  the  invention  or  discovery  sufficiently 
useful  and  important,  to  cause  letters-patent  to  be  made 
out  in  the  name  of  the  United  States,  to  bear  teste  by  the 
President  of  the  United  States,  reciting  the  allegations 
and  suggestions  of  the  said  petition,  and  describing  the 
said  invention  or  discovery,  clearly,  truly,  and  fully,  and 
thereupon  granting  to  such  petitioner  or  petitioners,  his, 
her,  or  their  heirs,  administrators,  or  assigns,  for  any  term 
not  exceeding  fourteen  years,  the  sole  and  exclusive  right 
and  liberty  of  making,  constructing,  using,  and  vending 

841 


842  THE    PATENT   BTAT1    PES 

toothers  to  be  used,  the  said  invention  or  discovery; which 
letters  patenl  Bhall  be  delivered  to  the  Attorney-General 
of  the  United  Slates  to  be  examined,  who  shall,  within 
fifteen  days  next  after  the  delivery  to  him,  if  he  shall  find 
the  same  conformable  to  this  act,  certify  it  to  be  so  at  the 
foot  thereof,  and  present  the  letters-patent  so  certified 
to  the  President,  who  shall  cause  the  seal  of  the  United 
States  to  be  thereto  affixed,  and  the  same  shall  be  good 
and  available  to  the  grantee  or  grantees  by  force  of  this  act, 
to  all  and  every  intent  and  purpose  herein  contained,  and 
shall  be  recorded  in  a  book  to  be  kept  for  that  purpose  in 
the  office  of  the  Secretary  of  State,  and  delivered  to  the 
patentee  or  his  agent,  and  the  delivery  thereof  shall  be 
entered  on  the  record  and  indorsed  on  the  patent  by  the 
said  Secretary  at  the  time  of  granting  the  same. 

Section  2.  And  be  it  further  enacted,  That  the  grantee 
or  grantees  of  each  patent  shall,  at  the  time  of  granting 
the  same,  deliver  to  the  Secretary  of  State  a  specification 
in  writing,  containing  a  description,  accompanied  with 
drafts  or  models,  and  explanations  and  models  (if  the 
nature  of  the  invention  or  discovery  will  admit  of  a  model), 
of  the  thing  or  things  by  him  or  them  invented  or  dis- 
covered, and  described  as  aforesaid,  in  the  said  patents; 
which  specification  shall  be  so  particular,  and  said  models 
so  exact,  as  not  only  to  distinguish  the  invention  or  dis- 
covery from  other  things  before  known  and  used,  but  also 
to  enable  a  workman  or  other  person  skilled  in  the  art  of 
manufacture,  whereof  it  is  a  branch,  or  wherewith  it  may 
be  nearest  connected,  to  make,  construct,  or  use  the  same, 
to  the  end  that  the  public  may  have  the  full  benefit  thereof, 
after'  the  expiration  of  the  patent  term;  which  specifica- 
tions shall  be  filed  in  the  office  of  the  said  Secretary,  and 
certified  copies  thereof  shall  be  competent  evidence  in 
all  courts  and  before  all  jurisdictions,  where  any  matter 


THE    PATENT   ACT   OF    1790  <S4.'! 

or  thing,  touching  or  concerning  such  patent,  right,  or 
privilege  shall  come  in  question. 

Section  3.  And  be  it  further  enacted,  That  upon  the 
application  of  any  person  to  the  Secretary  of  State,  for  a 
copy  of  any  such  specification,  and  for  permission  to  have 
similar  model  or  models  made,  it  shall  be  the  duty  of  the 
Secretary  to  give  such  a  copy,  and  to  permit  the  person 
so  applying  for  a  similar  model  or  models,  to  take,  or  make, 
or  cause  the  same  to  be  taken  or  made,  at  the  expense  of 
such  applicant. 

Section  4.  And  be  it  further  enacted,  That  if  any  person 
or  persons  shall  devise,  make,  construct,  use,  employ,  or 
vend,  within  these  United  States,  any  art,  manufacture, 
engine,  machine,  or  device,  or  any  invention  or  improve- 
ment upon,  or  in  any  art,  manufacture,  engine,  machine, 
or  device,  the  sole  and  exclusive  right  of  which  shall  be  so 
as  aforesaid  granted  by  patent  to  any  person  or  persons, 
by  virtue  and  in  pursuance  of  this  act,  without  the  consent 
of  the  patentee  or  patentees,  their  executors,  administra- 
tors, or  assigns,  first  had  and  obtained  in  writing,  every 
person  so  offending  shall  forfeit  and  pay  to  the  said  pat- 
entee or  patentees,  his,  her,  or  their  executors,  adminis- 
trators, or  assigns,  such  damages  as  shall  be  assessed  by  a 
jury,  and  moreover  shall  forfeit  to  the  person  aggrieved, 
the  thing  or  things  so  devised,  made,  constructed,  used, 
employed,  or  vended,  contrary  to  the  true  intent  of  this 
act,  which  may  be  recovered  in  an  action  on  the  case 
founded  on  this  act. 

Section  5.  And  be  it  further  enacted,  That  upon  oath  or 
affirmation  made  before  the  judge  of  the  district  court 
where  the  defendant  resides,  that  any  patent  which  shall 
be  issued  in  pursuance  of  this  act,  was  obtained  surrepti- 
tiously by,  or  upon  false  suggestion,  and  motion  made 
to  the  said  court,  within  one  year  after  issuing  the  said 


844  THE    PATENT    STATUTES 

patent,  but  not  afterwards,  it  shall  and  may  be  lawful 
to  and  for  the  judge  of  the  said  district  court,  if  the  matter 
alleged  shall  appear  to  him  to  1><v  sufficient,  to  grant  a  rule 
t  hat  I  he  patentee  or  patentees,  his,  her,  or  their  executors, 
administrators,  or  assigns,  show  cause  why  process  should 
not  issue  against  him,  her,  or  them,  to  repeal  such  patents; 
and  if  sufficient  cause  shall  not  be  shown  to  the  contrary, 
the  rule  shall  be  made  absolute,  and  thereupon  the  said 
judge  shall  order  process  to  be  issued  as  aforesaid,  against 
such  patentee  or  patentees,  his,  her,  or  their  executors, 
adnunistrators,  or  assigns.  And  in  case  no  sufficient  cause 
shall  be  shown  to  the  contrary,  or  if  it  shall  appear  that 
the  patentee  was  not  the  first  and  true  inventor  or  dis- 
coverer, judgment  shall  be  rendered  by  such  court  for  the 
repeal  of  such  patent  or  patents;  and  if  the  party  at  whose 
complaint  the  process  issued  shall  have  judgment  given 
against  him,  he  shall  pay  all  such  costs  as  the  defendant 
shall  be  put  to  in  defending  the  suit,  to  be  taxed  by  the 
court,  and  recovered  in  such  manner  as  costs  expended 
by  defendants  shall  be  recovered  in  due  course  of  law. 

Section  6.  And  be  it  further  enacted,  That  in  all  actions 
to  be  brought  by  such  patentee  or  patentees,  his,  her,  or 
their  executors,  administrators,  or  assigns,  for  any  penalty 
incurred  by  virtue  of  this  act,  the  said  patents  or  specifi- 
cations shall  be  prima  facie  evidence  that  the  said  patentee 
or  patentees  was  or  were  the  first  and  true  inventor  or 
inventors,  discoverer  or  discoverers,  of  the  thing  so  speci- 
fied, and  that  the  same  is  truly  specified;  but  that  never- 
theless the  defendant  or  defendants  may  plead  the  general 
issue,  and  give  this  act,  and  any  special  matter  whereof 
notice  in  writing  shall  have  been  given  to  the  plaintiff, 
or  his  attorney,  thirty  days  before  the  trial,  in  evidence 
tending  to  prove  that  the  specification  filed  by  the  plain- 
tiff does  not  contain  the  whole  of  the  truth  concerning 


THE  PATENT  ACT  OF  1793  845 

his  invention  or  discovery;  or  that  it  contains  more  than 
is  necessary  to  produce  the  effect  described;  and  if  the 
concealment  of  part,  or  the  addition  of  more  than  is  neces- 
sary, shall  appear  to  have  been  intended  to  mislead,  or 
shall  actually  mislead  the  public,  so  as  the  effect  described 
cannot  be  produced  by  the  means  specified,  then,  and  in 
such  cases,  the  verdict  and  judgment  shall  be  for  the  de- 
fendant. 

Section  7.  And  be  it  further  enacted,  That  such  patentee 
as  aforesaid  shall,  before  he  receives  his  patent,  pay  the 
following  fees  to  the  several  officers  employed  in  making 
out  and  perfecting  the  same,  to  wit:  For  receiving  and 
filing  the  petition,  fifty  cents;  for  filing  specifications,  per 
copy-sheet  containing  one  hundred  words,  ten  cents; 
for  making  out  patent,  two  dollars ;  for  affixing  great  seal, 
one  dollar;  for  indorsing  the  day  of  delivering  the  same 
to  the  patentee,  including  all  intermediate  services,  twenty 
cents. 

Approved  April  10,  1790. 

Repealed  February  21,  1793.  1  Statutes  at  Large, 
Chap.  11,  Section  12,  p.  323. 

PATENT  ACT  OF  1793 

1  Statutes  at  Large,  318 

An  Act  to  promote  the  progress  of  useful  Arts;  and  to 
repeal   the  act  heretofore  made  for  that  purpose. 

Section  1.  Be  it  enacted  by  the  Senate  and  House  of  Rep- 
resentatives of  the  United  States  of  America  in  Congress  as- 
sembled, That  when  any  person  or  persons,  being  a  citizen 
or  citizens  of  the  United  States,  shall  allege  that  he  or 
they  have  invented  any  new  and  useful  art,  machine, 


8  |ii  Tin:    p  \ti.\  r  >t\  n  PES 

manufacture,  or  composil  ion  of  matter,  or  any  new  and  use- 
ful improvemenl  on  any  art,  machine,  manufacture)  or 
composition  of  matter,  not  known  or  used  before  the  ap- 
plication, and  shall  presenl  a  petition  to  the  Secretary  of 
State,  signifying  a  desire  of  obtaining  an  exclusive  property 
in  the  same,  and  praying  that  a  patent  may  be  granted 
therefor,  it  shall  and  may  be  lawful  for  the  said  Secretary 
of  State  to  cause  letters-patent  to  be  made  out  in  the  name 
of  the  United  States,  bearing  teste  by  the  President  of  the 
United  States,  reciting  the  allegations  and  suggestions  of 
the  said  petition,  and  giving  a  short  description  of  the 
said  invention  or  discovery,  and  thereupon  granting  to 
such  petitioner  or  petitioners,  his,  her,  or  their  heirs,  ad- 
ministrators, or  assigns,  for  a  term  not  exceeding  fourteen 
years,  the  full  and  exclusive  right  and  liberty  of  making, 
constructing,  using,  and  vending  to  others  to  be  used,  the 
said  invention  or  discovery,  which  letters-patent  shall  be 
delivered  to  the  Attorney-General  of  the  United  States, 
to  be  examined;  who,  within  fifteen  days  after  such  de- 
livery, if  he  finds  the  same  conformable  to  this  act,  shall 
certify  accordingly,  at  the  foot  thereof,  and  return  the  same 
to  the  Secretary  of  State,  who  shall  present  the  letters- 
patent,  thus  certified,  to  be  signed,  and  shall  cause  the  seal 
of  the  United  States  to  be  thereto  affixed;  and  the  same 
shall  be  good  and  available  to  the  grantee  or  grantees, 
by  force  of  this  act,  and  shall  be  recorded  in  a  book,  to  be 
kept  for  that  purpose,  in  the  office  of  the  Secretary  of 
State,  and  delivered  to  the  patentee  or  his  order. 

Section  2.  Provided  always,  and  be  it  further  enacted, 
That  any  person  who  shall  have  discovered  an  improve- 
ment in  the  principle  of  any  machine,  or  in  the  process 
of  any  composition  of  matter,  which  shall  have  been  pat- 
ented, and  shall  have  obtained  a  patent  for  such  improve- 
ment, he  shall  not  be  at  liberty  to  make,  use,  or  vend  the 


THE  PATENT  ACT  OF  1703  847 

original  discovery,  nor  shall  the  first  inventor  be  at  liberty 
to  use  the  improvement:  And  it  is  hereby  enacted  and 
declared,  that  simply  changing  the  form  or  the  proportions 
of  any  machine,  or  composition  of  matter,  in  any  degree, 
shall  not  be  deemed  a  discovery. 

Section  3.  And  be  it  further  enacted,  That  every  inven- 
tor, before  he  can  receive  a  patent,  shall  swear  or  affirm, 
that  he  does  verily  believe  that  he  is  the  true  inventor  or 
discoverer  of  the  art,  machine,  or  improvement  for  which 
he  solicits  a  patent,  which  oath  or  affirmation  may  be  made 
before  any  person  authorized  to  administer  oaths,  and  shall 
deliver  a  written  description  of  his  invention,  and  of  the 
manner  of  using,  or  process  of  compounding  the  same,  in 
such  full,  clear,  and  exact  terms,  as  to  distinguish  the  same 
from  all  other  things  before  known,  and  to  enable  any 
person  skilled  in  the  art  or  science  of  which  it  is  a  branch, 
or  with  which  it  is  most  nearly  connected,  to  make,  com- 
pound, and  use  the  same.  And  in  the  case  of  any  machine, 
he  shall  fully  explain  the  principle,  and  the  several  modes 
in  which  he  has  contemplated  the  application  of  that 
principle  or  character,  by  which  it  may  be  distinguished 
from  other  inventions ;  and  he  shall  accompany  the  whole 
with  drawings  and  written  references,  where  the  nature 
of  the  case  admits  of  drawings,  or  with  specimens  of  the 
ingredients,  and  of  the  composition  of  matter,  sufficient 
in  quantity  for  the  purpose  of  experiment,  where  the  in- 
vention is  of  a  composition  of  matter;  which  description, 
signed  by  himself,  and  attested  by  two  witnesses,  shall  be 
filed  in  the  office  of  the  Secretary  of  State,  and  certified 
copies  thereof  shall  be  competent  evidence  in  all  courts, 
where  any  matter  or  thing,  touching  such  patent  right 
shall  come  in  question.  And  such  inventor  shall,  more- 
over, deliver  a  model  of  his  machine,  provided  the  Secre- 
tary shall  deem  such  model  to  be  necessary. 


848  THE    PATKNT    STATI  TKS 

SECTION  4.  And  be  it  further  enacted,  That  it  shall  be 
lawful  for  any  inventor,  his  executor  or  administrator, 
i«.  assign  the  title  and  interest  in  the  said  invention,  at 
any  I  ime,  and  the  assignee,  having  recorded  the  said  assign- 
ment in  the  office  of  the  Secretary  of  State,  shall  thereafter 
stand  in  the  place  of  the  original  inventor,  both  as  to  right 
and  responsibility,  and  so  the  assignees  of  assigns,  to  any 
degree. 

Section  5.  And  be  it  further  enacted,  That  if  any  person 
-hall  make,  devise,  and  use,  or  sell  the  thing  so  invented, 
the  exclusive  right  of  which  shall,  as  aforesaid,  have  been 
secured  to  any  person  by  patent,  without  the  consent  of 
the  patentee,  his  executors,  administrators,  or  assigns, 
first  obtained  in  writing,  every  person  so  offending  shall 
forfeit  and  pay  to  the  patentee  a  sum  that  shall  be  at  least 
equal  to  three  times  the  price  for  which  the  patentee  has 
usually  sold  or  licensed,  to  other  persons,  the  use  of  the 
said  invention,  which  may  be  recovered  in  an  action  on 
the  case  founded  on  this  act,  in  the  circuit  court  of  the 
United  States,  or  any  other  court  having  competent 
jurisdiction. 

Section  6.  Provided  always,  and  be  it  further  enacted, 
That  the  defendant  in  such  action  shall  be  permitted  to 
plead  the  general  issue,  and  give  this  act,  and  any  special 
matter,  of  which  notice  in  writing  may  have  been  given 
to  the  plaintiff  or  his  attorney,  thirty  days  before  trial, 
in  evidence,  tending  to  prove  that  the  specification  filed 
by  the  plaintiff  does  not  contain  the  whole  truth  relative 
to  his  discovery,  or  that  it  contains  more  than  is  necessary 
to  produce  the  described  effect,  which  concealment  or 
addition  shall  fully  appear  to  have  been  made  for  the  pur- 
pose of  deceiving  the  public,  or  that  the  thing  thus  secured 
by  patent  was  not  originally  discovered  by  the  patentee, 
but  had  been  in  use,  or  had  been  described  in  some  public 


THE    PATENT   ACT   OF    1793  !    1!) 

work  anterior  to  the  supposed  discovery  of  the  patentee, 
or  that  he  had  surreptitiously  obtained  a  patent  for  the 
discovery  of  another  person;  in  either  of  which  cases  judg- 
ment shall  be  rendered  for  the  defendant,  with  costs,  and 
the  patent  shall  be  declared  void. 

Section  7.  And  be  it  further  enacted,  That  where  any 
State,  before  its  adoption  of  the  present  form  of  govern- 
ment, shall  have  granted  an  exclusive  right  to  any  inven- 
tion, the  party  claiming  that  right  shall  not  be  capable  of 
obtaining  an  exclusive  right  under  this  act,  but  on  relin- 
quishing his  right  under  such  particular  State,  and  of 
such  relinquishment,  his  obtaining  an  exclusive  right  under 
this  act  shall  be  sufficient  evidence. 

Section  8.  And  be  it  further  enacted,  That  the  persons 
whose  applications  for  patents  were,  at  the  time  of  passing 
this  act,  depending  before  the  Secretary  of  State,  Secre- 
tary of  War,  and  Attorney-General,  according  to  the  act 
passed  the  second  session  of  the  first  Congress,  intituled 
"An  act  to  promote  the  progress  of  useful  arts,"  on  comply- 
ing with  the  conditions  of  this  act,  and  paying  the  fees 
herein  required,  may  pursue  their  respective  claims  to  a 
patent  under  the  same. 

Section  9.  And  be  it  further  enacted,  That  in  case  of 
interfering  applications,  the  same  shall  be  submitted  to 
the  arbitration  of  three  persons,  one  of  whom  shall  be 
chosen  by  each  of  the  applicants,  and  the  third  person 
shall  be  appointed  by  the  Secretary  of  State;  and  the  deci- 
sion or  award  of  such  arbitrators,  delivered  to  the  Secre- 
tary of  State  in  writing,  and  subscribed  by  them,  or  any 
two  of  them,  shall  be  final,  as  far  as  respects  the  granting 
of  the  patent.  And  if  either  of  the  applicants  shall  refuse 
or  fail  to  choose  an  arbitrator,  the  patent  shall  issue  to  the 
opposite  party.  And  where  there  shall  be  more  than  two 
interfering  applications,   and  the  parties  applying  shall 


g50  THK    l'ATKNT   STATUTES 

noi  all  unite  in  appointing  three  arbitrators,  it  shall  he 
in  the  power  of  the  Secretary  <>f  State  to  appoint  three 
arbitrators  for  the  purpose. 

Suction  10.  And  be  it  further  enacted,  That  upon  oath 
or  affirmation  being  made  before  the  judge  of  the  district 
court  where  the  patentee,  his  executors,  administrators, 
or  assigns,  reside,  that  any  patent,  which  shall  be  issued 
in  pursuance  of  this  act,  was  obtained  surreptitiously,  or 
upon  false  suggestion,  and  motion  made  to  the  said  court, 
within  three  years  after  issuing  the  said  patent,  but  not 
afterward,  it  shall  and  may  be  lawful  for  the  judge  of  the 
said  district  court,  if  the  matter  alleged  shall  appear  to 
him  to  be  sufficient,  to  grant  a  rule,  that  the  patentee,  or 
his  executor,  administrator,  or  assign  show  cause  why 
process  should  not  issue  against  him  to  repeal  such  patent. 
And  if  sufficient  cause  shall  not  be  shown  to  the  con- 
trary, the  rule  shall  be  made  absolute,  and  thereupon  the 
said  judge  shall  order  process  to  be  issued  against  such 
patentee,  or  his  executors,  administrators,  or  assigns,  with 
costs  of  suit.  And  in  case  no  sufficient  cause  shall  be 
shown  to  the  contrary,  or  if  it  shall  appear  that  the  pat- 
entee was  not  the  true  inventor  or  discoverer,  judgment 
shall  be  rendered  by  such  court  for  the  repeal  of  such 
patent;  and  if  the  party,  at  whose  complaint  the  process 
issued,  shall  have  judgment  given  against  him,  he  shall 
pay  all  such  costs  as  the  defendant  shall  be  put  to  in  de- 
fending the  suit,  to  be  taxed  by  the  court,  and  recovered 
in  due  course  of  law. 

Section  11.  And  be  it  further  enacted,  That  every  in- 
ventor, before  he  presents  his  petition  to  the  Secretary  of 
State,  signifying  his  desire  of  obtaining  a  patent,  shall 
pay  into  the  treasury  thirty  dollars,  for  which  he  shall 
take  duplicate  receipts ;  one  of  which  receipts  he  shall  deliver 
to  the  Secretary  of  State,  when  he  presents  his  petition; 


THE  PATENT  ACT  OF  1793  851 

and  the  money  thus  paid  shall  be  in  full  for  the  sundry 
services  to  be  performed  in  the  office  of  the  Secretary  of 
State,  consequent  on  such  petition,  and  shall  pass  to  the 
account  of  clerk-hire  in  that  office:  Provided  nevertheless, 
That  for  every  copy,  which  may  be  required  at  the  said 
office,  of  any  paper  respecting  any  patent  that  has  been 
granted,  the  person  obtaining  such  copy  shall  pay,  at  the 
rate  of  twenty  cents,  for  every  copy-sheet  of  one  hundred 
words,  and  for  every  copy  of  a  drawing,  the  party  obtain- 
ing the  same,  shall  pay  two  dollars,  of  which  payments 
an  account  shall  be  rendered,  annually,  to  the  treasury 
of  the  United  States,  and  they  shall  also  pass  to  the  ac- 
count of  clerk-hire  in  the  office  of  the  Secretary  of  State. 

Section  12.  And  be  it  further  enacted,  That  the  act 
passed  the  tenth  day  of  April,  in  the  year  one  thousand 
seven  hundred  and  ninety,  intituled  "An  act  to  promote 
the  progress  of  useful  arts,"  be,  and  the  same  is  hereby, 
repealed:  Provided  always,  That  nothing  contained  in  this 
act  shall  be  construed  to  invalidate  any  patent  that  may 
have  been  granted  under  the  authority  of  the  said  act; 
and  all  patentees  under  the  said  act,  their  executors,  ad- 
ministrators, and  assigns,  shall  be  considered  within  the 
purview  of  this  act,  in  respect  to  the  violation  of  their 
rights:  provided  such  violations  shall  be  committed  after 
the  passing  of  this  act. 

Approved  February  21,  1793. 

Repealed  July  4,  1836.  5  Statutes  at  Large,  Chap.  357, 
Section  21,  p.  125. 


852  THE    PATENT   STATUTES 


PATENT  ACT  OF  1794 

I   Statutes  at  Large,  393 

An  Ad  supplementary  to  the  act  intituled  "An  act  to  pro- 
mote the  progress  of  Useful  Arts." 

/>'<  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  I Tnitcd  States  of  America  in  Congress  assembled, 
Thai  all  suits,  actions,  process  and  proceedings,  hereto- 
fore had  in  any  District  Court  of  the  United  States,  under 
an  act  passed  the  tenth  day  of  April,  in  the  year  one  thou- 
sand seven  hundred  and  ninety,  intituled  "An  act  to 'pro- 
mote the  progress  of  useful  arts,"  which  may  have  been 
set  aside,  suspended  or  abated,  by  reason  of  the  repeal 
of  the  said  act,  may  be  restored,  at  the  instance  of  the 
plaintiff  or  defendant,  within  one  year  from  and  after  the 
passing  of  this  act,  in  the  said  court,  to  the  same  situation 
in  which  they  may  have  been  when  they  were  so  set  aside, 
suspended,  or  abated;  and  that  the  parties  to  the  said 
suits,  actions,  process  or  proceedings  be,  and  are  hereby, 
entitled  to  proceed  in  such  cases,  as  if  no  such  repeal  of 
the  act  aforesaid  had  taken  place:  Provided  always,  That 
before  any  order  or  proceeding,  other  than  that  for  con- 
tinuing the  same  suits,  after  the  reinstating  thereof,  shall 
be  entered  or  had,  the  defendant  or  plaintiff,  as  the  case 
may  be,  against  whom  the  same  may  have  been  reinstated, 
shall  be  brought  into  court  by  summons,  attachment,  or 
such  other  proceeding  as  is  used  in  other  cases  for  compel- 
ling the  appearance  of  a  party. 

Approved  June  7,  1794. 

Repealed  July  4,  1836.  5  Statutes  at  Large,  Chap. 
357,  Section  21,  p.  125. 


THE    PATENT    ACT    OF    1800  853 

PATENT  ACT  OF  1800 

2  Statutes  at  Large,  37 

An  Act  to  extend  the  privilege  of  obtaining  patents  for 
useful  discoveries  and  inventions,  to  certain  persons 
therein  mentioned,  and  to  enlarge  and  define  the  pen- 
alties for  violating  the  rights  of  patentees. 

Section  1.  Be  it  enacted  by  the  Senate  and  House  of  Rep- 
resentatives of  the  United  States  of  America  in  Congress 
assembled,  That  all  and  singular  the  rights  and  privileges 
given,  intended  or  provided  to  citizens  of  the  United 
States,  respecting  patents  for  new  inventions,  discoveries, 
and  improvements,  by  the  act  intituled  "An  act  to  pro- 
mote the  progress  of  useful  arts,  and  to  repeal  the  act 
heretofore  made  for  that  purpose,"  shall  be,  and  hereby 
are,  extended  and  given  to  all  aliens  who  at  the  time  of 
petitioning  in  the  manner  prescribed  by  the  said  act, 
shall  have  resided  for  two  years  within  the  United  States, 
which  privileges  shall  be  obtained,  used,  and  enjoyed  by 
such  persons,  in  as  full  and  ample  manner,  and  under  the 
same  conditions,  limitations,  and  restrictions,  as  by  the 
said  act  is  provided  and  directed  in  the  case  of  citizens  of 
the  United  States:  Provided  always,  That  every  person  peti- 
tioning for  a  patent  for  any  invention,  art,  or  discovery, 
pursuant  to  this  act,  shall  make  oath  or  affirmation  before 
some  person  duly  authorized  to  administer  oaths  before 
such  patent  shall  be  granted,  that  such  invention,  art, 
or  discovery  hath  not,  to  the  best  of  his  or  her  knowledge 
or  belief,  been  known  or  used  either  in  this  or  any  foreign 
country,  and  that  every  patent  which  shall  be  obtained  pur- 
suant to  this  act,  for  any  invention,  art,  or  discovery,  which 


85  I  THE    PATENT   STATUTES 

it  shall  afterwards  appear  had  been  known  or  used  previ- 
ous to  such  application  for  a  patent,  shall  be  utterly  void. 

Section  2.  And  be  it  further  emu-led,  That  where  any 
person  hath  made,  or  shall  have  made,  any  new  invention, 
discovery,  or  improvement,  on  account  of  which  a  patent 
might,  by  virtue  of  this  or  the  above-mentioned  act,  be 
granted  bo  such  person,  and  shall  die  before  any  patent 
shall  be  granted  therefor,  the  right  of  applying  for  and 
obtaining  such  patent,  shall  devolve  on  the  legal  repre- 
sent at  ives  of  such  person  in  trust  for  the  heirs  at  law  of 
the  deceased,  in  case  he  shall  have  died  intestate;  but  if 
otherwise,  then  in  trust  for  his  devisees,  in  as  full  and  am- 
ple manner,  and  under  the  same  conditions,  limitations, 
and  restrictions  as  the  same  was  held,  or  might  have  been 
claimed  or  enjoyed  by  such  person,  in  his  or  her  lifetime; 
and  when  application  for  a  patent  shall  be  made  by  such 
legal  representatives,  the  oath  or  affirmation,  provided  in 
the  third  section  of  the  before-mentioned  act,  shall  be  so 
varied  as  to  be  applicable  to  them. 

Section  3.  And  be  it  further  enacted,  That  where  any 
patent  shall  be  or  shall  have  been  granted  pursuant  to 
this  or  the  above-mentioned  act,  and  any  person  without 
the  consent  of  the  patentee,  his  or  her  executors,  adminis- 
trators, or  assigns,  first  obtained  in  writing,  shall  make, 
devise,  use,  or  sell  the  thing  whereof  the  exclusive  right  is 
secured  to  the  said  patentee  by  such  patent,  such  person 
so  offending  shall  forfeit  and  pay  to  the  said  patentee,  his 
executors,  administrators,  or  assigns,  a  sum  equal  to  three 
times  the  actual  damage  sustained  by  such  patentee,  his 
executors,  administrators,  or  assigns,  from  or  by  reason 
of  such  offence,  which  sum  shall  and  may  be  recovered 
by  action  on  the  case  founded  on  this  and  the  above-men- 
tioned act,  in  the  circuit  court  of  the  United  States,  having 
jurisdiction  thereon. 


THE  PATENT  ACT  OF  1819  855 

Section  4.  And  be  it  further  enacted,  That  the  fifth 
section  of  the  above-mentioned  act,  intituled  "An  act 
to  promote  the  progress  of  useful  arts,  and  to  repeal  the 
act  heretofore  made  for  that  purpose,"  shall  be,  and  hereby 
is,  repealed. 

Approved  April  17,  1800. 

Repealed  July  4,  1836.  5  Statutes  at  Large,  Chap.  357, 
Section  21,  p.  125. 

PATENT  ACT  OF  1819 

3  Statutes  at  Large,  481 

An  Act  to  extend  the  jurisdiction  of  the  circuit  courts  of 
the  United  States  to  cases  arising  under  the  law  re- 
lating to  patents. 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled, 
That  the  circuit  courts  of  the  United  States  shall  have 
original  cognizance,  as  well  in  equity  as  at  law,  of  all  ac- 
tions, suits,  controversies,  and  cases  arising  under  any  law 
of  the  United  States,  granting  or  confirming  to  authors 
or  inventors  the  exclusive  right  to  their  respective  writ- 
ings, inventions,  and  discoveries;  and  upon  any  bill 
in  equity,  filed  by  any  party  aggrieved  in  any  such 
cases,  shall  have  authority  to  grant  injunctions,  according 
to  the  course  and  principles  of  courts  of  equity,  to  prevent 
the  violation  of  the  rights  of  any  authors  or  inventors, 
secured  to  them  by  any  laws  of  the  United  States,  on  such 
terms  and  conditions  as  the  said  courts  may  deem  fit 
and  reasonable:  Provided  however,  That  from  all  judgments 
and  decrees  of  any  circuit  courts  rendered  in  the  premises, 
a  writ  of  error  or  appeal,  as  the  case  may  require,  shall 


856  THE    PATENT   BTATUTES 

lie  to  the  Supreme  Court  of  the  United  States,  in  the  same 
manlier,  and  under  the  same  circumstances,  as  is  now 
provided  by  law  in  other  judgments  and  decrees  of  such 
circuit  courts. 

Approved  February  L5,  1S19. 

Repealed  July  4,  1836.  5  Statutes  at  Large,  Chap.  357, 
Section  21,  p.  125. 

PATENT  ACT  OF  JULY  3,  1832 

4  Statutes  at  Large,  559 
An  Act  concerning  patents  for  useful  inventions 

Section  1.  Be  it  enacted  by  the  Senate  and  House  of  Rep- 
resentatives of  the  United  States  of  America  in  Congress 
assembled,  That  it  shall  be  the  duty  of  the  Secretary  of 
State,  annually,  in  the  month  of  January,  to  report  to 
Congress,  and  to  publish  in  two  of  the  newspapers  printed 
in  the  city  of  Washington,  a  list  of  all  the  patents  for  dis- 
coveries, inventions,  and  improvements,  which  shall  have 
expired  within  the  year  immediately  preceding,  with  the 
names  of  the  patentees,  alphabetically  arranged. 

Section  2.  And  be  it  further  enacted,  That  application  to 
Congress  to  prolong  or  renew  the  term  of  a  patent  shall 
be  made  before  its  expiration,  and  shall  be  notified  at  least 
once  a  month,  for  three  months  before  its  presentation, 
in  two  newspapers  printed  in  the  city  of  Washington,  and 
in  one  of  the  newspapers  in  which  the  laws  of  the  United 
States  shall  be  published  in  the  State  or  Territory  in  which 
the  patentee  shall  reside.  The  petition  shall  set  forth 
particularly  the  grounds  of  the  application.  It  shall  be 
verified  by  oath ;  the  evidence  in  its  support  may  be  taken 
before  any  judge  or  justice  of  the  peace;  it  shall  be  ac- 


THE  PATENT  ACT  OF  1832  857 

companied  by  a  statement  of  the  ascertained  value  of  the 
discovery,  invention,  or  improvement,  and  of  the  receipts 
and  expenditures  of  the  patentee,  so  as  to  exhibit  the  profit 
or  loss  arising  therefrom. 

Section  3.  And  be  it  further  enacted,  That  wherever  any 
patent  which  has  been  heretofore,  or  shall  be  hereafter, 
granted  to  any  inventor  in  pursuance  of  the  act  of  Congress 
entitled  "An  act  to  promote  the  progress  of  useful  arts, 
and  to  repeal  the  act  heretofore  made  for  that  purpose," 
passed  on  the  twenty-first  day  of  February,  in  the  year 
of  our  Lord,  one  thousand  seven  hundred  and  ninety- 
three,  or  of  any  of  the  acts  supplementary  thereto,  shall 
be  invalid  or  inoperative,  by  reason  that  any  of  the  terms 
or  conditions  prescribed  in  the  third  section  of  the  said 
first-mentioned  act,  have  not,  by  inadvertence,  accident, 
or  mistake,  and  without  any  fraudulent  or  deceptive  in- 
tention, been  complied  with  on  the  part  of  the  said  inven- 
tor, it  shall  be  lawful  for  the  Secretary  of  State,  upon  the 
surrender  to  him  of  such  patent,  to  cause  a  new  patent 
to  be  granted  to  the  said  inventor  for  the  same  invention 
for  the  residue  of  the  period  then  unexpired,  for  which 
the  original  patent  was  granted,  upon  his  compliance 
with  the  terms  and  conditions  prescribed  in  the  said  third 
section  of  the  said  act.  And,  in  case  of  his  death,  or  any 
assignment  by  him  made  of  the  same  patent,  the  like 
right  shall  vest  in  his  executors  and  administrators,  or 
assignee  or  assignees:  Provided  however,  That  such  new 
patent  so  granted  shall,  in  all  respects,  be  liable  to  the 
same  matters  of  objection  and  defence  as  any  original 
patent  granted  under  the  said  first-mentioned  act.  But 
no  public  use  or  privilege  of  the  invention  so  patented, 
derived  from  or  after  the  grant  of  the  original  patent, 
either  under  any  special  license  of  the  inventor,  or  without 
the  consent  of  the  patentee  that  there  shall  be  a  free  public 


s."»s  THE    PATENT   STATUTES 

use  thereof,  shall,  in  any  manner,  prejudice  his  righl  of 
recovery  for  any  use  or  violation  of  his  invention  ;ifter 
the  grant  of  such  new  patent  us  aforesaid. 

Approved  July  3,  L832. 

Repealed  July  4,  183G.  5  Statutes  at  Large,  Chap.  357, 
Section  21,  p.  125. 

PATENT  ACT  OF  JULY  13,  1832 

4  Statutes  at  Large,  577 

An  Act  concerning  the  issuing  of  patents  to  aliens,  for  use- 
ful discoveries  and  inventions 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled,  That 
the  privileges  granted  to  the  aliens  described  in  the  first 
section  of  the  act,  to  extend  the  privilege  of  obtaining 
patents  for  useful  discoveries  and  inventions  to  certain 
persons  therein  mentioned,  and  to  enlarge  and  define  the 
penalties  for  violating  the  rights  of  patentees,  approved 
April  seventeenth,  eighteen  hundred,  be  extended  in  like 
manner  to  every  alien  who,  at  the  time  of  petitioning  for 
a  patent,  shall  be  resident  in  the  United  States,  and  shall 
have  declared  his  intention,  according  to  law,  to  become 
a  citizen  thereof:  Provided,  That  every  patent  granted 
by  virtue  of  this  act  and  the  privileges  thereto  appertain- 
ing, shall  cease  and  determine  and  become  absolutely  void 
without  resort  to  any  legal  process  to  annul  or  cancel  the 
same  in  case  of  a  failure  on  the  part  of  any  patentee,  for 
the  space  of  one  year  from  the  issuing  thereof,  to  introduce 
into  public  use  in  the  United  States  the  invention  or  im- 
provement for  which  the  patent  shall  be  issued ;  or  in  case 
the  same  for  any  period  of  six  months  after  such  introduc- 


THE  PATENT  ACT  OF  1836  859 

tion  shall  not  continue  to  be  publicly  used  and  applied 
in  the  United  States,  or  in  case  of  failure  to  become  a 
citizen  of  the  United  States,  agreeably  to  notice  given  to 
the  earliest  period  within  which  he  shall  be  entitled  to 
become  a  citizen  of  the  United  States. 

Approved  July  13,   1832. 

Repealed  July  4,  1836.  5  Statutes  at  Large,  Chap.  357, 
Section  21,  p.  125. 

PATENT  ACT  OF  1836 

5  Statutes  at  Large,  117 

An  Act  to  promote  the  progress  of  the  useful  arts,  and  to 
repeal  all  acts  and  parts  of  acts  heretofore  made  for 
that  purpose 

Section  1 .  Be  it  enacted  by  the  Senate  and  House  of  Rep- 
resentatives of  the  United  States  of  America  in  Congress 
assembled,  That  there  shall  be  established  and  attached 
to  the  Department  of  State  an  office  to  be  denominated 
the  Patent  Office;  the  chief  officer  of  which  shall  be  called 
the  Commissioner  of  Patents,  to  be  appointed  by  the 
President,  by  and  with  the  advice  and  consent  of  the  Sen- 
ate, whose  duty  it  shall  be,  under  the  direction  of  the  Sec- 
retary of  State,  to  superintend,  execute,  and  perform  all 
such  acts  and  things  touching  and  respecting  the  granting 
and  issuing  of  patents  for  new  and  useful  discoveries, 
inventions,  and  improvements,  as  are  herein  provided  for, 
or  shall  hereafter  be,  by  law,  directed  to  be  done  and  per- 
formed, and  shall  have  the  charge  and  custody  of  all  the 
books,  records,  papers,  models,  machines,  and  all  other 
things  belonging  to  said  office.  And  said  Commissioner 
shall  receive  the  same  compensation  as  is  allowed  by  law 


Slit)  THE    PA  PEN  r   STATUTES 

!o  the  ( lommissioner  of  the  Indian  Department,  and  shall 
be  entitled  to  scud  and  receive  letters  and  packages  by 
mail,  relating  to  the  business  <>f  (lie  office,  free  of  postage. 

-i  i  tion  2.  And  be  it  further  enacted,  That  there  shall  be 
in  said  office  an  inferior  officer,  to  be  appointed  by  the  said 
principal  officer,  with  the  approval  of  the  Secretary  of 
Stale,  to  receive  an  annual  salary  of  seventeen  hundred 
dollars,  and  to  be  called  the  Chief  Clerk  of  the  Patent 
Office;  who  in  all  cases  during  the  necessary  absence  of 
the  Commissioner,  or  when  then  said  principal  office  shall 
become  vacant,  shall  have  the  charge  and  custody  of  the 
seal,  and  of  the  records,  books,  papers,  machines,  models, 
and  all  other  things  belonging  to  the  said  office,  and  shall 
perform  the  duties  of  Commissioner  during  such  vacancy. 
And  the  said  Commissioner  may  also,  with  like  approval, 
appoint  an  examining  clerk,  at  an  annual  salary  of  fifteen 
hundred  dollars;  two  other  clerks  at  twelve  hundred  dollars 
each,  one  of  whom  shall  be  a  competent  draughtsman;  one 
other  clerk  at  one  thousand  dollars ;  a  machinist  at  twelve 
hundred  and  fifty  dollars;  and  a  messenger  at  seven  hun- 
dred dollars.  And  said  Commissioner,  clerks,  and  every 
other  person  appointed  and  employed  in  said  office,  shall 
be  disqualified  and  interdicted  from  acquiring  or  taking, 
except  by  inheritance,  during  the  period  for  which  they 
shall  hold  their  appointments,  respectively,  any  right  or 
interest,  directly  or  indirectly,  in  any  patent  for  an  inven- 
tion or  discovery  which  has  been,  or  may  hereafter  be 
granted. 

Section  3.  And  be  it  further  enacted,  That  the  said 
principal  officer,  and  every  other  person  to  be  appointed 
in  the  said  office,  shall,  before  he  enters  upon  the  duties  of 
his  office  or  appointment,  make  oath  or  affirmation  truly 
and  faithfully  to  execute  the  trust  committed  to  him.  And 
the  said  Commissioner  and  the  chief  clerk  shall  also,  before 


THE    PATENT   ACT   OF    1836  861 

entering  upon  their  duties,  severally  give  bonds,  with 
sureties,  to  the  Treasurer  of  the  United  States,  the  former 
in  the  sum  of  ten  thousand  dollars,  and  the  latter  in  the 
sum  of  five  thousand  dollars,  with  condition  to  render  a 
true  and  faithful  account  to  him  or  his  successor  in  office, 
quarterly,  of  all  moneys  which  shall  be  by  them  respec- 
tively received  for  duties  on  patents,  and  for  copies  of 
records  and  drawings,  and  all  other  moneys  received  by 
virtue  of  said  office. 

Section  4.  And  be  it  further  enacted,  That  the  said 
Commissioner  shall  cause  a  seal  to  be  made  and  provided 
for  the  said  office,  with  such  device  as  the  President  of  the 
United  States  shall  approve;  and  copies  of  any  records, 
books,  papers,  or  drawings  belonging  to  the  said  office, 
under  the  signature  of  the  said  Commissioner,  or,  when  the 
office  shall  be  vacant  under  the  signature  of  the  chief  clerk, 
with  the  said  seal  affixed,  shall  be  competent  evidence  in  all 
cases  in  which  the  original  records,  books,  papers,  or 
drawings  could  be  evidence.  And  any  person  making 
application  therefor  may  have  certified  copies  of  the  rec- 
ords, drawings,  and  other  papers  deposited  in  said  office, 
on  paying  for  the  written  copies  the  sum  of  ten  cents  for 
every  page  of  one  hundred  words;  and  for  copies  of  draw- 
ings the  reasonable  expense  of  making  the  same. 

Section  5.  And  be  it  further  enacted,  That  all  patents 
issued  from  said  office  shall  be  issued  in  the  name  of  the 
United  States,  and  under  the  seal  of  said  office,  and  be 
signed  by  the  Secretary  of  State,  and  countersigned  by  the 
Commissioner  of  the  said  office,  and  shall  be  recorded,  to- 
gether with  the  descriptions,  specifications,  and  drawings, 
in  the  said  office,  in  books  to  be  kept  for  that  purpose. 
Every  such  patent  shall  contain  a  short  description  or  title 
of  the  invention  or  discovery,  correctly  indicating  its 
nature  and  design,  and  in  its  terms  grant  to  the  applicant 


862  THE    PATENT   STATUTES 

or  applicants,  his  or  their  heirs,  administrators,  executors, 
or  assigns,  for  ;i  term  not  exceeding  fourteen  years,  the 
full  unci  exclusive  right  and  liberty  of  making,  using,  and 
vending  to  others  to  be  used,  the  said  invention  or  dis- 
covery, referring  to  the  specifications  for  the  particulars 
thereof,  a  copy  of  which  shall  be  annexed  to  the  patent, 
specifying  what  the  patentee  claims  as  his  invention  or 
discovery. 

Section  6.  And  be  it  further  enacted,  That  any  person  or 
persons,  having  discovered  or  invented  any  new  and  useful 
art,  machine,  manufacture,  or  composition  of  matter,  or 
any  new  and  useful  improvement  on  any  art,  machine, 
manufacture,  or  composition  of  matter,  not  known  or  used 
by  others  before  his  or  their  discovery  or  invention  thereof, 
and  not,  at  the  time  of  his  application  for  a  patent,  in 
public  use  or  on  sale,  with  his  consent  or  allowance,  as 
the  inventor  or  discoverer;  and  shall  desire  to  obtain  an 
exclusive  property  therein,  may  make  application,  in 
writing,  to  the  Commissioner  of  Patents,  expressing  such 
desire,  and  the  Commissioner,  on  due  proceedings  had, 
may  grant  a  patent  therefor.  But  before  any  inventor 
shall  receive  a  patent  for  any  such  new  invention  or  dis- 
covery, he  shall  deliver  a  written  description  of  his  inven- 
tion or  discovery,  and  of  the  manner  and  process  of 
making,  constructing,  using,  and  compounding  the  same, 
in  such  full,  clear,  and  exact  terms,  avoiding  unnecessary 
prolixity,  as  to  enable  any  person  skilled  in  the  art  or 
science  to  which  it  appertains,  or  with  which  it  is  most 
nearly  connected,  to  make,  construct,  compound,  and  use 
the  same;  and  in  case  of  any  machine,  he  shall  fully  explain 
the  principle,  and  the  several  modes  in  which  he  has  con- 
templated the  application  of  that  principle  or  character 
by  which  it  may  be  distinguished  from  other  inventions; 
and  shall  particularly  specify  and  point  out  the  part,  im- 


THE  PATENT  ACT  OF  1836  863 

provement,  or  combination,  which  he  claims  as  his  own 
invention  or  discovery.  He  shall,  furthermore,  accompany 
the  whole  with  a  drawing  or  drawings,  and  written  ref- 
erences, where  the  nature  of  the  case  admits  of  drawings, 
or  with  specimens  of  ingredients,  and  of  the  composition 
of  matter,  sufficient  in  quantity  for  the  purpose  of  exper- 
iment, where  the  invention  or  discovery  is  of  a  composi- 
tion of  matter;  which  descriptions  and  drawings,  signed 
by  the  inventor  and  attested  by  two  witnesses,  shall  be 
filed  in  the  Patent  Office;  and  he  shall  moreover  furnish  a 
model  of  his  invention,  in  all  cases  which  admit  of  a  rep- 
resentation by  model,  of  a  convenient  size  to  exhibit 
advantageously  its  several  parts.  The  applicant  shall  also 
make  oath  or  affirmation  that  he  does  verily  believe  that 
he  is  the  original  and  first  inventor  or  discoverer  of  the  art, 
machine,  composition,  or  improvement,  for  which  he 
solicits  a  patent,  and  that  he  does  not  know  or  believe  that 
the  same  was  ever  before  known  or  used ;  and  also  of  what 
country  he  is  a  citizen;  which  oath  or  affirmation  may  be 
made  before  any  person  authorized  by  law  to  administer 
oaths. 

Section  7.  And  be  it  further  enacted,  That  on  the  filing 
of  any  such  application,  description,  and  specification,  and 
the  payment  of  the  duty  hereinafter  provided,  the  Com- 
missioner shall  make,  or  cause  to  be  made,  an  examination 
of  the  alleged  new  invention  or  discovery;  and  if,  on  any 
such  examination,  it  shall  not  appear  to  the  Commissioner 
that  the  same  had  been  invented  or  discovered  by  any 
other  person  in  this  country  prior  to  the  alleged  invention 
or  discovery  thereof  by  the  applicant,  or  that  it  had  been 
patented  or  described  in  any  printed  publication  in  this  or 
any  foreign  country,  or  had  been  in  public  use  or  on  sale 
with  the  applicant's  consent  or  allowance  prior  to  the 
application,  if  the  Commissioner  shall  deem  it  to  be  suffi- 


8(3  1  THE    PATENT   STATUTES 

ciently  useful  and  important,  it  shall  be  his  duty  to  issue  a 
patent  therefor.  But  whenever,  on  such  examination,  it 
shall  appear  to  the  Commissioner  that  the  applicant  was 
not  the  original  and  first  inventor,  or  discoverer  thereof, 
or  that  any  part  of  that  which  is  claimed  as  new  had  be- 
fore been  invented  or  discovered,  or  patented,  or  described 
in  any  printed  publication  in  this  or  any  foreign  country, 
as  aforesaid,  or  that  the  description  is  defective  and  insuffi- 
cient, he  shall  notify  the  applicant  thereof,  giving  him, 
briefly,  such  information  and  references  as  may  be  useful 
in  judging  of  the  propriety  of  renewing  his  application,  or 
of  altering  his  specification,  to  embrace  only  that  part 
of  the  invention  or  discovery  which  is  new.  In  every 
such  case,  if  the  applicant  shall  elect  to  withdraw  his 
application,  relinquishing  his  claim  to  the  model,  he  shall 
be  entitled  to  receive  back  twenty  dollars,  part  of  the  duty 
required  by  this  act,  on  filing  a  notice  in  writing  of  such 
election  in  the  Patent  Office,  a  copy  of  which,  certified  by 
the  Commissioner,  shall  be  a  sufficient  warrant  to  the 
treasurer  for  paying  back  to  the  said  applicant  the  said 
sum  of  twenty  dollars.  But  if  the  applicant  in  such  case 
shall  persist  in  his  claims  for  a  patent,  with  or  without  any 
alteration  in  his  specification,  he  shall  be  required  to  make 
oath  or  affirmation  anew,  in  manner  as  aforesaid.  And 
if  the  specification  and  claim  shall  not  have  been  so  mod- 
ified as,  in  the  opinion  of  the  Commissioner,  shall  entitle 
the  applicant  to  a  patent,  he  may,  on  appeal,  and  upon 
request  in  writing,  have  the  decision  of  a  board  of  exam- 
iners, to  be  composed  of  three  disinterested  persons,  who 
shall  be  appointed  for  that  purpose  by  the  Secretary  of 
State,  one  of  whom  at  least,  to  be  selected,  if  practicable 
and  convenient,  for  his  knowledge  and  skill  in  the  par- 
ticular art,  manufacture,  or  branch  of  science  to  which  the 
alleged  invention  appertains;  who  shall  be  under  oath  or 


THE    PATENT    ACT   OF    1836  865 

affirmation  for  the  faithful  and  impartial  performance 
of  the  duty  imposed  upon  them  by  said  appointment. 
Said  board  shall  be  furnished  with  a  certificate  in  writing 
of  the  opinion  and  decision  of  the  Commissioner,  stating 
the  particular  grounds  of  his  objection,  and  the  part  or 
parts  of  the  invention  which  he  considers  as  not  entitled 
to  be  patented.  And  the  said  board  shall  give  reasonable 
notice  to  the  applicant,  as  well  as  to  the  Commissioner,  of 
the  time  and  place  of  their  meeting,  that  the}'  may  have 
an  opportunity  of  furnishing  them  with  such  facts  and 
evidence  as  they  may  deem  necessary  to  a  just  decision; 
and  it  shall  be  the  duty  of  the  Commissioner  to  furnish 
to  the  board  of  examiners  such  information  as  he  may 
possess  relative  to  the  matter  under  their  consideration. 
And  on  an  examination  and  consideration  of  the  matter  by 
such  board,  it  shall  be  in  their  power,  or  of  a  majority  of 
them,  to  reverse  the  decision  of  the  Commissioner,  either 
in  whole  or  in  part,  and  their  opinion  being  certified  to  the 
Commissioner,  he  shall  be  governed  thereby  in  the  further 
proceedings  to  be  had  on  such  application:  Provided  how- 
ever, That  before  a  board  shall  be  instituted  in  any  such 
case,  the  applicant  shall  pay  to  the  credit  of  the  treasury, 
as  provided  in  the  ninth  section  of  this  act,  the  sum  of 
twenty-five  dollars,  and  each  of  said  persons  so  appointed 
shall  be  entitled  to  receive  for  his  services  in  each  case  a 
sum  not  exceeding  ten  dollars,  to  be  determined  and  paid 
by  the  Commissioner  out  of  any  moneys  in  his  hands, 
which  shall  be  in  full  compensation  to  the  persons  who 
may  be  so  appointed,  for  their  examination  and  certificate 
as  aforesaid. 

Section  8.  And  be  it  further  enacted,  That  whenever  an 
application  shall  be  made  for  a  patent  which,  in  the  opinion 
of  the  Commissioner,  would  interfere  with  any  other  pat- 
ent for  which  an  application  may  be  pending,  or  with  any 


866  I'H  i :    PATENT   STATUTES 

unexpired  patenl  which  shall  have  beeD  granted,  it  shall 
be  the  duty  <>i'  the  ( Jommissioner  to  give  notice  thereof  to 
such  applicants,  or  patentees,  as  the  case  may  be;  and  if 
either  shall  be  dissatisfied  with  the  decision  of  the  Commis- 
sioner on  the  question  of  priority  of  right  or  invention,  on 
:i  hearing  thereof,  he  may  appeal  from  such  decision,  on 
the  like  terms  and  conditions  as  are  provided  in  the  pre- 
ceding section  of  this  act;  and  the  like  proceedings  shall  be 
had,  to  determine  which  or  whether  either  of  the  applicants 
is  entitled  to  receive  a  patent  as  prayed  for.  But  nothing 
in  this  act  contained  shall  be  construed  to  deprive  an 
original  and  true  inventor  of  the  right  to  a  patent  for  his 
invention,  by  reason  of  his  having  previously  taken  out 
letters-patent  therefor  in  a  foreign  country,  and  the  same 
having  been  published,  at  any  time  within  six  months  next 
preceding  the  filing  of  his  specification  and  drawings. 
And  whenever  the  applicant  shall  request  it,  the  patent 
shall  take  date  from  the  time  of  the  filing  of  the  specifica- 
tion and  drawings,  not  however  exceeding  six  months  prior 
to  the  actual  issuing  of  the  patent;  and  on  like  request, 
and  the  payment  of  the  duty  herein  required,  by  any 
applicant,  his  specification  and  drawings  shall  be  filed  in 
the  secret  archives  of  the  office  until  he  shall  furnish  the 
model  and  the  patent  to  be  issued,  not  exceeding  the  term 
of  one  year,  the  applicant  being  entitled  to  notice  of  in- 
terfering applications. 

Section  9.  And  be  it  further  enacted,  That  before  any 
application  for  a  patent  shall  be  considered  by  the  Com- 
missioner as  aforesaid,  the  applicant  shall  pay  into  the 
treasury  of  the  United  States,  or  into  the  Patent  Office, 
or  into  any  of  the  deposit  banks,  to  the  credit  of  the  treas- 
ury, if  he  be  a  citizen  of  the  United  States,  or  an  alien,  and 
shall  have  been  resident  in  the  United  States  for  one  year 
next  preceding,  and  shall  have  made  oath  of  his  intention 


THE  PATENT  ACT  OF  1830  867 

to  become  a  citizen  thereof,  the  sum  of  thirty  dollars;  if 
a  subject  of  the  king  of  Great  Britain,  the  sum  of  five 
hundred  dollars;  and  all  other  persons  the  sum  of  three 
hundred  dollars;  for  which  payment  duplicate  receipts 
shall  be  taken,  one  of  which  to  be  filed  in  the  office  of  the 
Treasurer.  And  the  moneys  received  into  the  treasury 
under  this  act  shall  constitute  a  fund  for  the  payment 
of  the  salaries  of  the  officers  and  clerks  herein  provided 
for,  and  all  other  expenses  of  the  Patent  Office,  and  to  be 
called  the  patent  fund. 

Section  10.  And  be  it  further  enacted,  That  where  any 
person  hath  made,  or  shall  have  made,  any  new  invention, 
discovery,  or  improvement,  on  account  of  which  a  patent 
might  by  virtue  of  this  act  be  granted,  and  such  person 
shall  die  before  any  patent  shall  be  granted  therefor,  the 
right  of  applying  for  and  obtaining  such  patent  shall  de- 
volve on  the  executor  or  administrator  of  such  person,  in 
trust  for  the  heirs  at  law  of  the  deceased,  in  case  he  shall 
have  died  intestate:  but  if  otherwise,  then  in  trust  for  his 
devisees,  in  as  full  and  ample  manner,  and  under  the  same 
conditions,  limitations,  and  restrictions  as  the  same  was 
held,  or  might  have  been  claimed  or  enjoyed  by  such  per- 
son in  his  or  her  lifetime;  and  when  application  for  a  patent 
shall  be  made  by  such  legal  representatives,  the  oath 
or  affirmation  provided  in  the  sixth  section  of  this  act  shall 
be  so  varied  as  to  be  applicable  to  them. 

Section  11.  And  be  it  further  enacted,  That  every  patent 
shall  be  assignable  in  law,  either  as  to  the  whole  interest, 
or  any  undivided  part  thereof,  by  any  instrument  in  writ- 
ing; which  assignment,  and  also  every  grant  and  convey- 
ance of  the  exclusive  right,  under  any  patent,  to  make  and 
use,  and  to  grant  to  others  to  make  and  use  the  thing 
patented  within  and  throughout  any  specified  part  or 
portion  of  the  United  States,  shall  be  recorded  in  the  Pat- 


868  THE    PATENT   STATUTES 

enl  Office  within  three  months  from  the  execution  thereof, 
for  which  the  assignee  or  grantee  shall  pay  to  the  Com- 
missioner the  sum  of  three  dollars. 

Section  12.  And  be  it  further  enacted,  That  any  citizen 
of  the  United  States,  or  alien,  who  shall  have  been  a  resi- 
dent of  the  United  States  one  year  next  preceding,  and 
shall  have  made  oath  of  his  intention  to  become  a  citizen 
thereof,  who  shall  have  invented  any  new  art,  machine, 
or  improvement  thereof,  and  shall  desire  further  time  to 
make  the  same,  may,  on  paying  to  the  credit  of  the  treas- 
ury, in  manner  as  provided  in  the  ninth  section  of  this  act, 
the  sum  of  twenty  dollars,  file  in  the  Patent  Office  a  caveat, 
setting  forth  the  design  and  purpose  thereof,  and  its  prin- 
cipal and  distinguishing  characteristics,  and  praying  pro- 
tection of  his  right  till  he  shall  have  matured  his  invention; 
which  sum  of  twenty  dollars,  in  case  the  person  filing  such 
caveat  shall  afterwards  take  out  a  patent  for  the  invention 
therein  mentioned,  shall  be  considered  a  part  of  the  sum 
herein  required  for  the  same.  And  such  caveat  shall  be 
filed  in  the  confidential  archives  of  the  office,  and  preserved 
in  secrecy.  And  if  application  shall  be  made  by  any  other 
person  within  one  year  from  the  time  of  filing  such  caveat, 
for  a  patent  of  any  invention  with  which  it  may  in  any 
respect  interfere,  it  shall  be  the  duty  of  the  Commissioner 
to  deposit  the  description,  specifications,  drawings,  and 
model,  in  the  confidential  archives  of  the  office,  and  to 
give  notice,  by  mail,  to  the  person  filing  the  caveat,  of 
such  application,  who  shall,  within  three  months  after 
receiving  the  notice,  if  he  would  avail  himself  of  the  benefit 
of  his  caveat,  file  his  description,  specifications,  drawings, 
and  model;  and  if,  in  the  opinion  of  the  Commissioner, 
the  specifications  of  claim  interfere  with  each  other,  like 
proceedings  may  be  had  in  all  respects  as  are  in  this  act 
provided  in  the  case  of  interfering  applications:  Provided 


THE    PATENT  ACT   OF    1836  R00 

however,  That  no  opinion  or  decision  of  any  hoard  of  ex- 
aminers, under  the  provisions  of  this  act,  shall  preclude 
any  person,  interested  in  favor  of  or  against  the  validity 
of  any  patent  which  has  been  or  may  hereafter  be  granted, 
from  the  right  to  contest  the  same  in  any  judicial  court 
in  any  action  in  which  its  validity  may  come  in  question. 

Section  13.  And  be  it  further  enacted,  That  whenever 
any  patent  which  has  heretofore  been  granted,  or  which 
shall  hereafter  be  granted,  shall  be  inoperative,  or  invalid, 
by  reason  of  a  defective  or  insufficient  description  or  speci- 
fication, or  by  reason  of  the  patentee  claiming  in  his  speci- 
fication as  his  own  invention  more  than  he  had  or  shall 
have  a  right  to  claim  as  new;  if  the  error  has  or  shall  have 
arisen  by  inadvertency,  accident,  or  mistake,  and  without 
any  fraudulent  or  deceptive  intention,  it  shall  be  lawful 
for  the  Commissioner,  upon  the  surrender  to  him  of  such 
patent,  and  the  payment  of  the  further  duty  of  fifteen 
dollars,  to  cause  a  new  patent  to  be  issueH  to  the  said  in- 
ventor, for  the  same  invention,  for  the  residue  of  the  period 
then  unexpired  for  which  the  original  patent  was  granted, 
in  accordance  with  the  patentee's  corrected  description 
and  specification.  And  in  case  of  his  death,  or  any  assign- 
ment by  him  made  of  the  original  patent,  a  similar  right 
shall  vest  in  his  executors,  administrators,  or  assignees. 
And  the  patent,  so  reissued,  together  with  the  corrected 
description  and  specification,  shall  have  the  same  effect 
and  operation  in  law,  on  the  trial  of  all  actions  hereafter 
commenced  for  causes  subsequently  accruing  as  though 
the  same  had  been  originally  filed  in  such  corrected  form, 
before  the  issuing  out  of  the  original  patent.  And  when- 
ever the  original  patentee  shall  be  desirous  of  adding  the 
description  and  specification  of  any  new  improvement  of 
the  original  invention  or  discovery  which  shall  have  been 
invented  or  discovered  by  him  subsequent  to  the  date  of 


s7(>  THE   PATENT   STATUTES 

his  patent,  he  may,  like  proceedings  being  had  in  all  re- 
spects  as  in  the  case  of  original  applications,  and  on  the 
paymenl  of  fifteen  dollars  as  hereinbefore  provided,  have 
the  same  annexed  to  the  original  description  and  specifi- 
cation; and  the  Commissioner  shall  certify,  on  the  margin 
of  such  annexed  description  and  specification,  the  time  of 
its  being  annexed  and  recorded;  and  the  same  shall  there- 
after have  the  same  effect  in  law,  to  all  intents  and  pur- 
poses, as  though  it  had  been  embraced  in  the  original 
description  and  specification. 

Section  14.  And  be  it  further  enacted,  That  whenever, 
in  any  action  for  damages  for  making,  using,  or  selling  the 
thing  whereof  the  exclusive  right  is  secured  by  any  patent 
heretofore  granted,  or  by  any  patent  which  may  hereafter 
be  granted,  a  verdict  shall  be  rendered  for  the  plaintiff 
in  such  action,  it  shall  be  in  the  power  of  the  court  to  ren- 
der judgment  for  any  sum  above  the  amount  found  by 
such  verdict  as  the  actual  damages  sustained  by  the  plain- 
tiff, not  exceeding  three  times  the  amount  thereof,  accord- 
ing to  the  circumstances  of  the  case,  with  costs;  and  such 
damages  may  be  recovered  by  action  on  the  case,  in  any 
court  of  competent  jurisdiction,  to  be  brought  in  the 
name  or  names  of  the  person  or  persons  interested,  whether 
as  patentees,  assignees,  or  as  grantees  of  the  exclusive 
right  within  and  throughout  a  specified  part  of  the  United 
States. 

Section  15.  And  be  it  further  enacted,  That  the  defend- 
ant in  any  such  action  shall  be  permitted  to  plead  the  gen- 
eral issue,  and  to  give  this  act  and  any  special  matter  in 
evidence,  of  which  notice  in  writing  may  have  been  given 
to  the  plaintiff  or  his  attorney,  thirty  days  before  trial, 
tending  to  prove  that  the  description  and  specification 
filed  by  the  plaintiff  does  not  contain  the  whole  truth 
relative  to  his  invention  or  discovery,  or  that  it  contains 


THE  PATENT  ACT  OF  1836  871 

more  than  is  necessary  to  produce  the  described  effect; 
which  concealment  or  addition  shall  fully  appear  to  have 
been  made  for  the  purpose  of  deceiving  the  public,  or  that 
the  patentee  was  not  the  original  and  first  inventor  or 
discoverer  of  the  thing  patented,  or  of  a  substantial  and 
material  part  thereof  claimed  as  new,  or  that  it  had  been 
described  in  some  public  work  anterior  to  the  supposed 
discovery  thereof  by  the  patentee,  or  had  been  in  public 
use  or  on  sale  with  the  consent  and  allowance  of  the  pat- 
entee before  his  application  for  a  patent,  or  that  he  had 
surreptitiously  or  unjustly  obtained  the  patent  for  that 
which  was  in  fact  invented  or  discovered  by  another,  who 
was  using  reasonable  diligence  in  adapting  and  perfecting 
the  same;  or  that  the  patentee,  if  an  alien  at  the  time  the 
patent  was  granted,  had  failed  and  neglected,  for  the  space 
of  eighteen  months  from  the  date  of  the  patent,  to  put  and 
continue  on  sale  to  the  public,  on  reasonable  terms,  the 
invention  or  discovery  for  which  the  patent  issued;  in 
either  of  which  cases  judgment  shall  be  rendered  for  the 
defendant  with  costs.  And  whenever  the  defendant  relies 
in  his  defence  on  the  fact  of  a  previous  invention,  knowl- 
edge, or  use  of  the  thing  patented,  he  shall  state,  in  his 
notice  of  special  matter,  the  names  and  places  of  residence 
of  those  whom  he  intends  to  prove  to  have  possessed  a 
prior  knowledge  of  the  thing,  and  where  the  same  had 
been  used:  Provided  however,  That  whenever  it  shall  satis- 
factorily appear  that  the  patentee,  at  the  time  of  making 
his  application  for  the  patent,  believed  himself  to  be  the 
first  inventor  or  discoverer  of  the  thing  patented,  the  same 
shall  not  be  held  to  be  void  on  account  of  the  invention  or 
discovery  or  any  part  thereof  having  been  before  known  or 
used  in  any  foreign  country,  it  not  appearing  that  the 
same  or  any  substantial  part  thereof  had  before  been 
patented  or  described  in  any  printed  publication.     And 


872  THE    PATENT   STATUTES 

provided  also,  Thai  whenever  the  plaintiff  shall  fail  to 
sustain  his  action  on  the  ground  that  in  his  specification 
of  claim  is  embraced  more  than  that  of  which  he  was  the 
first  inventor,  if  it  shall  appear  that  the  defendant  had 
used  or  violated  any  part  of  the  invention  justly  and  truly 
specified  and  claimed  as  new,  it  shall  be  in  the  power  of  the 
court  to  adjudge  and  award  as  to  costs,  as  may  appear  to 
be  just  and  equitable. 

Section  16.  And  be  it  further  enacted,  That  whenever 
there  shall  be  two  interfering  patents,  or  whenever  a  pat- 
ent on  application  shall  have  been  refused  on  an  adverse 
decision  of  a  board  of  examiners,  on  the  ground  that  the 
patent  applied  for  would  interfere  with  an  unexpired 
patent  previously  granted,  any  person  interested  in  any 
such  patent,  either  by  assignment  or  otherwise,  in  the  one 
case,  and  any  such  applicant  in  the  other  case,  may  have 
remedy  by  bill  in  equity;  and  the  court  having  cognizance 
thereof,  on  notice  to  adverse  parties,  and  other  due  pro- 
ceedings had,  may  adjudge  and  declare  either  the  patents 
void  in  the  whole  or  in  part,  or  inoperative  or  invalid  in 
any  particular  part  or  portion  of  the  United  States,  ac- 
cording to  the  interest  which  the  parties  to  such  suit 
may  possess  in  the  patent  or  the  inventions  patented,  and 
may  also  adjudge  that  such  applicant  is  entitled,  accord- 
ing to  the  principles  and  provisions  of  this  act,  to  have  and 
receive  a  patent  for  his  invention,  as  specified  in  his  claim, 
or  for  any  part  thereof,  as  the  fact  of  priority  of  right  or 
invention  shall  in  any  such  case  be  made  to  appear.  And 
such  adjudication,  if  it  be  in  favor  of  the  right  of  such  ap- 
plicant, shall  authorize  the  Commissioner  to  issue  such 
patent,  on  his  filing  a  copy  of  the  adjudication,  and  other- 
wise complying  with  the  requisitions  of  this  act.  Provided 
however,  That  no  such  judgment  or  adjudication  shall 
affect  the  rights  of  any  person  except  the  parties  to  the  ac- 


THE  PATENT  ACT  OF  1836  873 

tion  and  those  deriving  title  from  or  under  them  subse- 
quent to  the  rendition  of  such  judgment. 

Section  17.  And  be  it  further  enacted,  That  all  actions, 
suits,  controversies,  and  cases  arising  under  any  law  of  the 
United  States,  granting  or  confirming  to  inventors  the 
exclusive  right  to  their  inventions  or  discoveries,  shall  ho 
originally  cognizable,  as  well  in  equity  as  at  law,  by  the 
circuit  courts  of  the  United  States,  or  any  district  court 
having  the  power  and  jurisdiction  of  a  circuit  court;  which 
courts  shall  have  power,  upon  a  bill  in  equity  filed  by  any 
party  aggrieved,  in  any  such  case,  to  grant  injunctions, 
according  to  the  course  and  principles  of  courts  of  equity, 
to  prevent  the  violation  of  the  rights  of  any  inventor  as 
secured  to  him  by  any  law  of  the  United  States,  on  such 
terms  and  conditions  as  said  courts  may  deem  reasonable : 
Provided  however,  That  from  all  judgments  and  decrees 
from  any  such  court  rendered  in  the  premises,  a  writ  of 
error  or  appeal,  as  the  case  may  require,  shall  lie  to  the 
Supreme  Court  of  the  United  States,  in  the  same  manner 
and  under  the  same  circumstances  as  is  now  provided  by 
law  in  other  judgments  and  decrees  of  circuit  courts,  and 
in  all  other  cases  in  which  the  court  shall  deem  it  reasonable 
to  allow  the  same. 

Section  18.  And  be  it  further  enacted,  That  whenever 
any  patentee  of  an  invention  or  discovery  shall  desire  an 
extension  of  his  patent  beyond  the  term  of  its  limitation, 
he  may  make  application  therefor,  in  writing,  to  the  Com- 
missioner of  the  Patent  Office,  setting  forth  the  grounds 
thereof;  and  the  Commissioner  shall,  on  the  applicant's 
paying  the  sum  of  forty  dollars  to  the  credit  of  the  treas- 
ury, as  in  the  case  of  an  original  application  for  a  patent, 
cause  to  be  published  in  one  or  more  of  the  principal  news- 
papers in  the  city  of  Washington,  and  in  such  other  paper 
or  papers  as  he  may  deem  proper,  published  in  the  section 


s,  I  THE    PATENT   STATUTES 

of  country  most  interested  adversely  to  the  extension  of 
the  patent,  a  notice  of  such  application  and  of  the  time 
and  place  when  and  where  the  same  will  be  considered, 

that  any  person  may  appear  and  show  cause  why  the 
extension  should  not  be  granted.  And  the  Secretary  of 
State,  the  Commissioner  of  the  Patent  Office,  and  the 
Solicitor  of  the  Treasury  shall  constitute  a  board  to  hear 
and  decide  upon  the  evidence  produced  before  them  both 
for  and  against  the  extension,  and  shall  sit  for  that  purpose 
at  the  time  and  place  designated  in  the  published  notice 
thereof.  The  patentee  shall  furnish  to  said  board  a  state- 
ment, in  writing,  under  oath,  of  the  ascertained  value  of 
the  invention,  and  of  his  receipts  and  expenditures,  suffi- 
ciently in  detail  to  exhibit  a  true  and  faithful  account  of 
loss  and  profit  in  any  manner  accruing  to  him  from  and 
by  reason  of  said  invention.  And  if,  upon  a  hearing  of 
the  matter,  it  shall  appear  to  the  full  and  entire  satisfac- 
tion of  said  board,  having  due  regard  to  the  public  interest 
therein,  that  it  is  just  and  proper  that  the  term  of  the 
patent  should  be  extended,  by  reason  of  the  patentee, 
without  neglect  or  fault  on  his  part,  having  failed  to  ob- 
tain, from  the  use  and  sale  of  his  invention,  a  reasonable 
remuneration  for  the  time,  ingenuity,  and  expense  be- 
stowed upon  the  same,  and  the  introduction  thereof  into 
use,  it  shall  be  the  duty  of  the  Commissioner  to  renew  and 
extend  the  patent,  by  making  a  certificate  thereon  of  such 
extension,  for  the  term  of  seven  years  from  and  after  the 
expiration  of  the  first  term;  which  certificate,  with  a  certif- 
icate of  said  board  of  their  judgment  and  opinion  as  afore- 
said, shall  be  entered  on  record  in  the  Patent  Office;  and 
thereupon  the  said  patent  shall  have  the  same  effect  in 
law  as  though  it  had  been  originally  granted  for  the  term 
of  twenty-one  years.  And  the  benefit  of  such  renewal 
shall  extend  to  assignees  and  grantees  of  the  right  to  use 


THE  PATENT  ACT  0E  1836  875 

the  tiling  patented,  to  the  extent  of  their  respective  in- 
terests therein:  Provided  however,  That  no  extension  of  a 
patent  shall  be  granted  after  the  expiration  of  the  term  for 
which  it  was  originally  issued. 

Section  19.  And  be  it  further  enacted,  That  there  shall 
be  provided  for  the  use  of  said  office,  a  library  of  scientific 
works  and  periodical  publications,  both  foreign  and  Amer- 
ican, calculated  to  facilitate  the  discharge  of  the  duties 
hereby  required  of  the  chief  officers  therein,  to  be  pur- 
chased under  the  direction  of  the  Committee  of  the  Li- 
brary of  Congress.  And  the  sum  of  fifteen  hundred  dollars 
is  hereby  appropriated  for  that  purpose,  to  be  paid  out 
of  the  patent  fund. 

Section  20.  And  be  it  further  enacted,  That  it  shall  be 
the  duty  of  the  Commissioner  to  cause  to  be  classified 
and  arranged,  in  such  rooms  or  galleries  as  may  be  pro- 
vided for  that  purpose,  in  suitable  cases,  when  necessary 
for  then  preservation,  and  in  such  manner  as  shall  be  con- 
ducive to  a  beneficial  and  favorable  display  thereof,  the 
models  and  specimens  of  compositions  and  of  fabrics  and 
other  manufactures  and  works  of  art,  patented  or  unpat- 
ented, which  have  been,  or  shall  hereafter  be,  deposited 
in  said  office.  And  said  rooms  or  galleries  shall  be  kept 
open  dining  suitable  hours  for  public  inspection. 

Section  21.  And  be  it  further  enacted,  That  all  acts  and 
parts  of  acts  heretofore  passed  on  this  subject  be,  and  the 
same  are  hereby  repealed:  Provided  however,  That  all 
actions  and  processes  in  law  or  equity  sued  out  prior  to 
the  passage  of  this  act  may  be  prosecuted  to  final  judgment 
and  execution,  in  the  same  manner  as  though  this  act  had 
not  been  passed,  excepting  and  saving  the  application  to 
any  such  action  of  the  provisions  of  the  fourteenth  and 
fifteenth  sections  of  this  act,  so  far  as  they  may  be  appli- 
cable thereto;  And  provided  also,  That  all  applications  or 


876  THE    PATENT   STATUTES 

petitions  for  patents,  pending  at  the  time  of  the  passage 
of  this  act,  in  cases  where  the  duty  has  been  paid,  shall 
he  proceeded  with  and  acted  on  in  the  same  manner  as 
though  filed  after  the  passage  hereof. 

Approved  July  4,  1836. 

Repealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  21 6. 

PATENT  ACT  OF  1837 

5  Statutes  at  Large,  191 

An  Act  in  addition  to  the  act  to  promote  the  progress  of 
science  and  useful  arts 

Section  1.  Be  it  enacted  by  the  Senate  and  House  of 
Representatives  of  the  United  States  of  America  in  Congress 
assembled,  That  any  person  who  may  be  in  possession  of, 
or  in  any  way  interested  in,  any  patent  for  an  invention, 
discovery,  or  improvement,  issued  prior  to  the  fifteenth 
day  of  December,  in  the  year  of  our  Lord  one  thousand 
eight  hundred  and  thirty-six,  or  in  an  assignment  of  any 
patent,  or  interest  therein,  executed  and  recorded  prior 
to  the  said  fifteenth  day  of  December,  may,  without 
charge,  on  presentation  or  transmission  thereof  to  the 
Commissioner  of  Patents,  have  the  same  recorded  anew 
in  the  Patent  Office,  together  with  the  descriptions,  speci- 
fications of  claim  and  drawings  annexed  or  belonging  to  the 
same;  and  it  shall  be  the  duty  of  the  Commissioner  to 
cause  the  same,  or  any  authenticated  copy  of  the  original 
record,  specification,  or  drawing  which  he  may  obtain, 
to  be  transcribed  and  copied  into  books  of  record  to  be 
kept  for  that  purpose;  and  wherever  a  drawing  was  not 
originally  annexed  to  the  patent  and  referred  to  in  the 


THE    PATENT   ACT   OF    1837  8<  i 

specification,  any  drawing  produced  as  a  delineation  of 
the  invention,  being  verified  by  oath  in  such  manner  as 
the  Commissioner  shall  require,  may  be  transmitted  and 
placed  on  file,  or  copied  as  aforesaid,  together  with  certif- 
icate of  the  oath;  or  such  drawings  may  be  made  in  the 
office,  under  the  direction  of  the  Commissioner,  in  conform- 
ity with  the  specification.  And  it  shall  be  the  duty  of 
the  Commissioner  to  take  such  measures  as  may  be  ad- 
vised and  determined  by  the  Board  of  Commissioners 
provided  for  in  the  fourth  section  of  this  act,  to  obtain 
the  patents,  specifications,  and  copies  aforesaid,  for  the 
purpose  of  being  so  transcribed  and  recorded.  And  it 
shall  be  the  duty  of  each  of  the  several  clerks  of  the  judi- 
cial courts  of  the  United  States,  to  transmit  as  soon  as 
may  be,  to  the  Commissioner  of  the  Patent  Office,  a 
statement  of  all  the  authenticated  copies  of  patents,  de- 
scriptions, specifications,  and  drawings  of  inventions  and 
discoveries  made  and  executed  prior  to  the  aforesaid  fif- 
teenth day  of  December,  which  may  be  found  on  the  files 
of  his  office;  and  also  to  make  out  and  transmit  to  said 
Commissioner,  for  record  as  aforesaid,  a  certified  copy 
of  every  such  patent,  description,  specification,  or  drawing, 
which  shall  be  specially  required  by  said  Commissioner. 

Section  2.  And  be  it  further  enacted,  That  copies  of 
such  record  and  drawings,  certified  by  the  Commissioner, 
or,  in  his  absence,  by  the  chief  clerk,  shall  be  prima  facie 
evidence  of  the  particulars  of  the  invention  and  of  the 
patent  granted  therefor  in  any  judicial  court  of  the  United 
States,  in  all  cases  where  copies  of  the  original  record  or 
specification  and  drawings  would  be  evidence,  without 
proof  of  the  loss  of  such  originals;  and  no  patent  issued 
prior  to  the  aforesaid  fifteenth  day  of  December  shall, 
after  the  first  day  of  June  next,  be  received  in  evidence 
in  any  of  the  said  courts  in  behalf  of  the  patentee  or  other 


S78  PHB    PATENT   STATUTES 

person  who  si  Kill  be  in  possession  of  the  same,  unless  it 
shall  have  been  so  recorded  anew,  and  a  drawing  of  the 
invention,  if  separate  from  the  patent,  verified  as  afore- 
said, deposited  in  the  Patent  Office;  nor  shall  any  written 
assignment  of  any  such  patent,  executed  and  recorded 
prior  to  the  said  fifteenth  day  of  December,  be  received 
in  evidence  in  any  of  the  said  courts  in  behalf  of  the  as- 
signee or  other  person  in  possession  thereof,  until  it  shall 
have  been  so  recorded  anew. 

Section  3.  And  be  it  further  enacted,  That  whenever  it 
shall  appear  to  the  Commissioner  that  any  patent  was 
destroyed  by  the  burning  of  the  Patent  Office  building 
on  the  aforesaid  fifteenth  day  of  December,  or  was  other- 
wise lost  prior  thereto,  it  shall  be  his  duty,  on  application 
therefor  by  the  patentee  or  other  person  interested  therein, 
to  issue  a  new  patent  for  the  same  invention  or  discovery, 
bearing  the  date  of  the  original  patent,  with  his  certificate 
thereon  that  it  was  made  and  issued  pursuant  to  the  pro- 
visions of  the  third  section  of  this  act,  and  shall  enter  the 
same  of  record :  Provided  however,  That  before  such  patent 
shall  be  issued  the  applicant  therefor  shall  deposit  in  the 
Patent  Office  a  duplicate,  as  near  as  may  be,  of  the  original 
model,  drawings,  and  description,  with  specification  of 
the  invention  or  discovery,  verified  by  oath,  as  shall  be 
required  by  the  Commissioner;  and  such  patent,  and  cop- 
ies of  such  drawings  and  descriptions,  duly  certified,  shall  be 
admissible  as  evidence  in  any  judicial  court  of  the  United 
States,  and  shall  protect  the  rights  of  the  patentee,  his 
administrators,  heirs,  and  assigns,  to  the  extent  only  in 
which  they  would  have  been  protected  by  the  original 
patent  and  specification. 

Section  4.  And  be  it  further  enacted,  That  it  shall  be  the 
duty  of  the  Commissioner  to  procure  a  duplicate  of  such 
of  the  models,  destroyed  by  fire  on  the  aforesaid  fifteenth 


THE  PATENT  ACT  OF  1837  879 

day  of  December,  as  were  most  valuable  and  interesting, 
and  whose  preservation  would  be  important  to  the  public  ; 
and  such  as  would  be  necessary  to  facilitate  the  just  dis- 
charge of  the  duties  imposed  by  law  on  the  Commissioner 
in  issuing  patents,  and  to  protect  the  rights  of  the  public 
and  of  patentees  in  patented  inventions  and  improve- 
ments :  Provided,  That  a  duplicate  of  such  models  may  be 
obtained  at  a  reasonable  expense:  And  provided  also, 
That  the  whole  amount  of  expenditure  for  this  purpose 
shall  not  exceed  the  sum  of  one  hundred  thousand  dollars. 
And  there  shall  be  a  temporary  board  of  Commissioners, 
to  be  composed  of  the  Commissioner  of  the  Patent  Office 
and  two  other  persons  to  be  appointed  by  the  President, 
whose  duty  it  shall  be  to  consider  and  determine  upon  the 
best  and  most  judicious  mode  of  obtaining  models  of 
suitable  construction;  and  also  to  consider  and  determine 
what  models  may  be  procured  in  pursuance  of,  and  in 
accordance  with,  the  provisions  and  limitations  in  this 
section  contained.  And  said  commissioners  may  make  and 
establish  all  such  regulations,  terms,  and  conditions,  not 
inconsistent  with  law,  as  in  their  opinion  may  be  proper 
and  necessary  to  carry  the  provisions  of  this  section  into 
effect,  according  to  its  true  intent. 

Section  5.  And  be  it  further  enacted,  That,  whenever  a 
patent  shall  be  returned  for  correction  and  reissue  under 
the  thirteenth  section  of  the  act  to  which  this  is  additional, 
and  the  patentee  shall  desire  several  patents  to  be  issued 
for  distinct  and  separate  parts  of  the  thing  patented,  he 
shall  first  pay,  in  manner  and  in  addition  to  the  sum  pro- 
vided by  that  act,  the  sum  of  thirty  dollars  for  each  ad- 
ditional patent  so  to  be  issued:  Provided  however,  That  no 
patent  made  prior  to  the  aforesaid  fifteenth  day  of  Decem- 
ber shall  be  corrected  and  reissued  until  a  duplicate  of 
the  model  and  drawing  of  the  thing  as  originally  invented, 


880  THE    PATENT   STATUTES 

verified  by  oath  us  shall  be  required  by  the  Commissioner, 
shall  be  deposited  in  the  Patent  Office: 

Nor  shall  any  addition  of  an  improvement  be  made  to 
any  patent  heretofore  granted,  nor  any  new  patent  be 
issued  for  an  improvement  made  in  any  machine,  manu- 
facture, or  process,  to  the  original  inventor,  assignee,  or 
possessor  of  a  patent  therefor,  nor  any  disclaimer  be 
admitted  to  record,  until  a  duplicate  model  and  drawing 
of  the  thing  originally  intended,  verified  as  aforesaid, 
shall  have  been  deposited  in  the  Patent  Office,  if  the  Com- 
missioner shall  require  the  same;  nor  shall  any  patent  be 
granted  for  an  invention,  improvement,  or  discovery,  the 
model  or  drawing  of  which  shall  have  been  lost,  until 
another  model  and  drawing,  if  required  by  the  Commis- 
sioner, shall,  in  like  manner,  be  deposited  in  the  Patent 
Office. 

And  in  all  such  cases,  as  well  as  in  those  which  may  arise 
under  the  third  section  of  this  act,  the  question  of  com- 
pensation for  such  models  and  drawings  shall  be  subject 
to  the  judgment  and  decision  of  the  Commissioners,  pro- 
vided for  in  the  fourth  section,  under  the  same  limitations 
and  restrictions  as  are  therein  prescribed. 

Section  6.  And  be  it  further  enacted,  That  any  patent 
hereafter  to  be  issued  may  be  made  and  issued  to  the  as- 
signee or  assignees  of  the  inventor  or  discoverer,  the  as- 
signment thereof  being  first  entered  of  record,  and  the 
application  therefor  being  duly  made,  and  the  specifica- 
tion duly  sworn  to  by  the  inventor.  And  in  all  cases 
hereafter,  the  applicant  for  a  patent  shall  be  held  to  fur- 
nish duplicate  drawings,  whenever  the  case  admits  of  draw- 
ings, one  of  which  to  be  deposited  in  the  office,  and  the 
other  to  be  annexed  to  the  patent,  and  considered  a  part 
of  the  specification. 

Section  7.  And  be  it  further  enacted,  That,  whenever  any 


THE  PATENT  ACT  OF  1837  881 

patentee  shall  have,  through  inadvertence,  accident,  or 
mistake,  made  his  specification  of  claim  too  broad,  claim- 
ing more  than  that  of  which  he  was  the  original  or  first 
inventor,  some  material  or  substantial  part  of  the  thing 
patented  being  truly  and  justly  his  own,  any  such  pat- 
entee, his  administrators,  executors,  and  assigns,  whether 
of  the  whole  or  of  a  sectional  interest  therein,  may  make 
disclaimer  of  such  parts  of  the  thing  patented  as  the  dis- 
claimant  shall  not  claim  to  hold  by  virtue  of  the  patent 
or  assignment,  stating  therein  the  extent  of  his  interest  in 
such  patent;  which  disclaimer  shall  be  in  writing,  attested 
by  one  or  more  witnesses,  and  recorded  in  the  Patent 
Office,  on  payment  by  the  person  disclaiming  in  manner 
as  other  patent  duties  are  required  by  law  to  be  paid,  of 
the  sum  of  ten  dollars.  And  such  disclaimer  shall  there- 
after be  taken  and  considered  as  part  of  the  original  spec- 
ification, to  the  extent  of  the  interest  which  shall  be 
possessed  in  the  patent  or  right  secured  thereby,  by  the 
disclaimant,  and  by  those  claiming  by  or  under  him  sub- 
sequent to  the  record  thereof.  But  no  such  disclaimer 
shall  affect  any  action  pending  at  the  time  of  its  being 
filed,  except  so  far  as  may  relate  to  the  question  of  un- 
reasonable neglect  or  delay  in  filing  the  same. 

Section  8.  And  be  it  further  enacted,  That,  whenever 
application  shall  be  made  to  the  Commissioner  for  any 
addition  of  a  newly  discovered  improvement  to  be  made 
to  an  existing  patent,  or  whenever  a  patent  shall  be  re- 
turned for  correction  and  reissue,  the  specification  of  claim 
annexed  to  every  such  patent  shall  be  subject  to  revision 
and  restriction,  in  the  same  manner  as  are  original  applica- 
tions for  patents;  the  Commissioner  shall  not  add  any 
such  improvement  to  the  patent  in  the  one  case,  nor  grant 
the  reissue  in  the  other  case,  until  the  applicant  shall  have 
entered  a  disclaimer,  or  altered  his  specification  of  claim 


882  THE    PATENT   STATUTES 

in  accordance  with  the  decision  of  the  Commissioner;  and 
in  all  such  cases,  the  applicant,  if  dissatisfied  with  such 
decision,  shall  have  the  same  remedy,  and  be  entitled  to 
the  benefit  of  the  same  privileges  and  proceedings  as  are 
provided  by  law  in  the  case  of  original  applications  for 
patents. 

Section  9.  And  be  it  further  enacted,  any  thing  in  the 
fifteenth  section  of  the  act  to  which  this  is  additional  to  the 
contrary  notwithstanding,  That,  whenever  by  mistake, 
accident,  or  inadvertence,  and  without  any  wilful  default 
or  intent  to  defraud  or  mislead  the  public,  any  patentee 
shall  have  in  his  specification  claimed  to  be  the  original 
and  first  inventor  or  discoverer  of  any  material  or  sub- 
stantial part  of  the  thing  patented,  of  which  he  was  not 
the  first  and  original  inventor,  and  shall  have  no  legal  or 
just  right  to  claim  the  same,  in  every  such  case  the  patent 
shall  be  deemed  good  and  valid  for  so  much  of  the  inven- 
tion or  discovery  as  shall  be  truly  and  bona  fide  his  own; 
Provided,  It  shall  be  a  material  and  substantial  part  of  the 
thing  patented,  and  be  definitely  distinguishable  from  the 
other  parts  so  claimed  without  right  as  aforesaid.  And 
every  such  patentee,  his  executors,  administrators,  and 
assigns,  whether  of  the  whole,  or  of  a  sectional  interest 
therein,  shall  be  entitled  to  maintain  a  suit  at  law  or  in 
equity  on  such  patent  for  any  infringement  of  such  part 
of  the  invention  or  discovery  as  shall  be  bona  fide  his  own 
as  aforesaid,  notwithstanding  the  specification  may  em- 
brace more  than  he  shall  have  any  legal  right  to  claim. 
But,  in  every  such  case  in  which  a  judgment  or  verdict 
shall  be  rendered  for  the  plaintiff,  he  shall  not  be  entitled 
to  recover  costs  against  the  defendant,  unless  he  shall 
have  entered  at  the  Patent  Office,  prior  to  the  commence- 
ment of  the  suit,  a  disclaimer  of  all  that  part  of  the  thing 
patented  which  was  so  claimed  without  right.     Provided 


THE  PATENT  ACT  OF  1837  883 

however,  That  no  person  bringing  any  such  suit  shall  be 
entitled  to  the  benefits  of  the  provisions  contained  in  this 
section,  who  shall  have  unreasonably  neglected  or  delayed 
to  enter  at  the  Patent  Office  a  disclaimer  as  aforesaid. 

Section  10.  And  be  it  further  enacted,  That  the  Commis- 
sioner is  hereby  authorized  and  empowered  to  appoint 
agents,  in  not  exceeding  twenty  of  the  principal  cities  or 
towns  in  the  United  States  as  may  best  accommodate 
the  different  sections  of  the  country,  for  the  purpose  of 
receiving  and  forwarding  to  the  Patent  Office  all  such 
models,  specimens  of  ingredients  and  manufactures,  as 
shall  be  intended  to  be  patented  or  deposited  therein, 
the  transportation  of  the  same  to  be  chargeable  to  the 
patent  fund. 

Section  11.  And  be  it  further  enacted,  That,  instead  of 
one  examining  clerk,  as  provided  by  the  second  section  of 
the  act  to  which  this  is  additional,  there  shall  be  appointed, 
in  manner  therein  provided,  two  examining  clerks,  each 
to  receive  an  annual  salary  of  fifteen  hundred  dollars; 
and  also,  an  additional  copying  clerk,  at  an  annual  salary 
of  eight  hundred  dollars.  And  the  Commissioner  is  also 
authorized  to  employ,  from  time  to  time,  as  many  tem- 
porary clerks  as  may  be  necessary  to  execute  the  copying 
and  draughting  required  by  the  first  section  of  this  act, 
and  to  examine  and  compare  the  records  with  the  originals, 
who  shall  receive  not  exceeding  seven  cents  for  every  page 
of  one  hundred  words,  and  for  drawings  and  comparison 
of  records  with  originals,  such  reasonable  compensation 
as  shall  be  agreed  upon  or  prescribed  by  the  Commissioner. 

Section  12.  And  be  it  further  enacted,  That,  wherever 
the  application  of  any  foreigner  for  a  patent  shall  be  re- 
jected and  withdrawn  for  want  of  novelty  in  the  invention, 
pursuant  to  the  seventh  section  of  the  act  to  which  this 
is  additional,  the  certificate  thereof  of  the  Commissioner 


884  THE    PATENT  STATUTES 

shall  be  a  Bufficienl  warrant  to  the  treasurer  to  pay  back 
to  such  applicant  two-thirds  of  the  duty  he  shall  have  paid 
into  the  treasury  on  account  of  such  application. 

Section  13.  And  be  it  further  enacted,  That  in  all  cases 
in  which  an  oath  is  required  by  this  act,  or  by  the  act  to 
which  this  is  additional,  if  the  person  of  whom  it  is  re- 
quired shall  be  conscientiously  scrupulous  of  taking  an 
oath,  affirmation  may  be  substituted  therefor. 

Section  14.  And  be  it  further  enacted,  That  all  moneys 
paid  into  the  treasury  of  the  United  States  for  patents  and 
for  fees  for  copies  furnished  by  the  Superintendent  of  the 
Patent  Office  prior  to  the  passage  of  the  act  to  which  this 
is  additional,  shall  be  carried  to  the  credit  of  the  patent 
fund  created  by  said  act;  and  the  moneys  constituting 
said  fund  shall  be,  and  the  same  are  hereby,  appropriated 
for  the  payment  of  the  salaries  of  the  officers  and  clerks 
provided  for  by  said  act,  and  all  other  expenses  of  the 
Patent  Office,  including  all  the  expenditures  provided  for 
by  this  act;  and  also  for  such  other  purposes  as  are  or  may 
be  hereafter  specially  provided  for  by  law.  And  the  Com- 
missioner is  hereby  authorized  to  draw  upon  said  fund, 
from  time  to  time,  for  such  sums  as  shall  be  necessary  to 
carry  into  effect  the  provisions  of  this  act,  governed,  how- 
ever, by  the  several  limitations  herein  contained.  And  it 
shall  be  his  duty  to  lay  before  Congress,  in  the  month  of 
January,  annually,  a  detailed  statement  of  the  expendi- 
tures and  payments  by  him  made  from  said  fund;  And 
it  shall  also  be  his  duty  to  lay  before  Congress,  in  the 
month  of  January,  annually,  a  list  of  all  patents  which 
shall  have  been  granted  during  the  preceding  year,  des- 
ignating, under  proper  heads,  the  subjects  of  such  patents, 
and  furnishing  an  alphabetical  list  of  the  patentees,  with 
their  places  of  residence;  and  he  shall  also  furnish  a  list 
of  all  patents  which  shall  have  become  public  property 


THE  PATENT  ACT  OF  1839  885 

during  the  same  period;  together  with  such  other  informa- 
tion of  the  state  and  condition  of  the  Patent  Office  as 
may  be  useful  to  Congress  or  the  public. 

Approved  March  3,  1837. 

Repealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 

PATENT  ACT  OF  1839 

5  Statutes  at  Large,  353 

An  Act  in  addition  to  "An  act  to  promote  the  progress  of 
the  useful  arts" 

Section  1 .  Be  it  enacted  by  the  Senate  and  House  of  Rep- 
resentatives of  the  United  States  of  America  in  Congress 
assembled,  That  there  shall  be  appointed,  in  manner  pro- 
vided in  the  second  section  of  the  act  to  which  this  is  addi- 
tional, two  assistant  examiners,  each  to  receive  an  annual 
salary  of  twelve  hundred  and  fifty  dollars. 

Section  2.  And  be  it  further  enacted,  That  the  Commis- 
sioner be  authorized  to  employ  temporary  clerks  to  do  any 
necessary  transcribing,  whenever  the  current  business  of 
the  office  requires  it;  Provided  however,  That  instead  of 
salary,  a  compensation  shall  be  allowed,  at  a  rate  not 
greater  than  is  charged  for  copies  now  furnished  by  the 
office. 

Section  3.  And  be  it  further  enacted,  That  the  Commis- 
sioner is  hereby  authorized  to  publish  a  classified  and 
alphabetical  list  of  all  patents  granted  by  the  Patent 
Office  previous  to  said  publication,  and  retain  one  hun- 
dred copies  for  the  Patent  Office  and  nine  hundred  copies 
to  be  deposited  in  the  library  of  Congress,  for  such  dis- 
tribution as  may  be  hereafter  directed;  and  that  one 


886  THE    PATENT   STATUTES 

thousand  dollars,  if  necessary,  be  appropriated,  out  of  the 
patent  fund,  to  defray  the  expense  of  the  same. 

Section  4.  And  be  it  further  enacted,  That  the  sum  of 
three  thousand  six  hundred  and  fifty-nine  dollars  and 
twenty-two  cents  be,  and  is  hereby,  appropriated  from 
the  patent  fund,  to  pay  for  the  use  and  occupation  of 
rooms  in  the  City  Hall  by  the  Patent  Office. 

Section  5.  And  be  it  further  enacted,  That  the  sum  of 
one  thousand  dollars  be  appropriated  from  the  patent 
fund,  to  be  expended  under  the  direction  of  the  Commis- 
sioner, for  the  purchase  of  necessary  books  for  the  library 
of  the  Patent  Office. 

Section  6.  And  be  it  further  enacted,  That  no  person 
shall  be  debarred  from  receiving  a  patent  for  any  inven- 
tion or  discovery,  as  provided  in  the  act  approved  on  the 
fourth  day  of  July,  one  thousand  eight  hundred  and 
thirty-six,  to  which  this  is  additional,  by  reason  of  the 
same  having  been  patented  in  a  foreign  country  more  than 
six  months  prior  to  his  application:  Provided,  That  the 
same  shall  not  have  been  introduced  into  public  and  com- 
mon use  in  the  United  States,  prior  to  the  application  for 
such  patent:  And  provided  also,  That  in  all  cases  every 
such  patent  shall  be  limited  to  the  term  of  fourteen  years 
from  the  date  or  publication  of  such  foreign  letters-patent. 

Section  7.  And  be  it  further  enacted,  That  every  person 
or  corporation  who  has,  or  shall  have,  purchased  or  con- 
structed any  newly  invented  machine,  manufacture,  or 
composition  of  matter,  prior  to  the  application  by  the 
inventor  or  discoverer  for  a  patent,  shall  be  held  to  possess 
the  right  to  use,  and  vend  to  others  to  be  used,  the  specific 
machine,  manufacture,  or  composition  of  matter  so  made 
or  purchased,  without  liability  therefor  to  the  inventor, 
or  any  other  person  interested  in  such  invention;  and  no 
patent  shall  be  held  to  be  invalid,  by  reason  of  such  pur- 


THE  PATENT  ACT  OF  1839  887 

chase,  sale,  or  use  prior  to  the  application  for  a  patent  as 
aforesaid,  except  on  proof  of  abandonment  of  such  inven- 
tion to  the  public ;  or  that  such  purchase,  sale,  or  prior  use 
has  been  for  more  than  two  years  prior  to  such  application 
for  a  patent. 

Section  8.  And  be  it  further  enacted,  That  so  much  of  the 
eleventh  section  of  the  above  recited  act  as  requires  the 
payment  of  three  dollars  to  the  Commissioner  of  Patents 
for  recording  any  assignment,  grant,  or  conveyance  of  the 
whole  or  any  part  of  the  interest  or  right  under  any  patent, 
be,  and  the  same  is  hereby,  repealed;  and  all  such  assign- 
ments, grants,  and  conveyances  shall,  in  future,  be  re- 
corded, without  any  charge  whatever. 

Section  10.  And  be  it  further  enacted,  That  the  pro- 
visions of  the  sixteenth  section  of  the  before-recited  act 
shall  extend  to  all  cases  where  patents  are  refused  for 
any  reason  whatever,  either  by  the  Commissioner  of  Pat- 
ents or  by  the  Chief  Justice  of  the  District  of  Columbia, 
upon  appeals  from  the  decision  of  said  Commissioner,  as 
well  as  where  the  same  shall  have  been  refused  on  account 
of,  or  by  reason  of,  interference  with  a  previously  existing 
patent;  and  in  all  cases  where  there  is  no  opposing  party, 
a  copy  of  the  bill  shall  be  served  upon  the  Commissioner 
of  Patents,  when  the  whole  of  the  expenses  of  the  pro- 
ceeding shall  be  paid  by  the  applicant,  whether  the  final 
decision  shall  be  in  his  favor  or  otherwise. 

Section  11.  And  be  it  further  enacted,  That  in  all  cases 
where  an  appeal  is  now  allowed  by  law  from  the  decision 
of  the  Commissioner  of  Patents  to  a  board  of  examiners, 
provided  for  in  the  seventh  section  of  the  act  to  which  this 
is  additional,  the  party,  instead  thereof,  shall  have  a 
right  to  appeal  to  the  Chief  Justice  of  the  district  court  of 
the  United  States  for  the  District  of  Columbia,  by  giving 
notice  thereof  to  the  Commissioner,  and  filing  in  the  Pat- 


sss  nil     PATENT  STATUTES 

cut  Office,  within  such  time  as  the  Commissioner  shall 
appoint,  hi*  reasons  of  appeal  specifically  set  forth  in 
writing,  and  also  paying  into  the  Patent  Office,  to  the 
credit  of  the  palent  fund,  the  SUED  of  twenty-five  dollars. 
And  il  shall  he  the  duty  of  said  Chief  Justice,  on  petition. 
to  heai-  and  determine  all  such  appeals,  and  to  revise  such 
decisions  in  a  summary  way,  on  the  evidence  produced 
before  the  Commissioner,  at  such  early  and  convenient 
time  as  he  may  appoint,  first  notifying  the  Commissioner 
of  the  time  and  place  of  hearing,  whose  duty  it  shall  be  to 
jiive  notice  thereof  to  all  parties  who  appear  to  be  inter- 
est ed  therein,  in  such  manner  as  said  judge  shall  prescribe. 
The  Commissioner  shall  also  lay  before  the  said  judge  all 
t  he  original  papers  and  evidence  in  the  case,  together  with 
the  grounds  of  his  decision,  fully  set  forth  in  writing, 
touching  all  the  points  involved  by  the  reasons  of  appeal, 
to  which  the  revision  shall  be  confined.  And  at  the  re- 
quest of  any  party  interested,  or  at  the  desire  of  the  judge, 
the  Commissioner  and  the  examiners  in  the  Patent  Office 
may  be  examined  under  oath,  in  explanation  of  the 
principles  of  the  machine  or  other  thing  for  which  a  patent, 
in  such  case  is  prayed  for.  And  it  shall  be  the  duty  of  said 
judge,  after  a  hearing  of  any  such  case,  to  return  all  the 
papers  to  the  Commissioner,  with  a  certificate  of  his  pro- 
ceedings and  decision,  which  shall  be  entered  of  record  in 
the  Patent  Office;  and  such  decision,  so  certified,  shall 
govern  the  further  proceedings  of  the  Commissioner  in 
such  case:  Provided  however,  That  no  opinion  or  decision 
of  the  judge  in  any  such  case  shall  preclude  any  person 
interested  in  favor  or  against  the  validity  of  any  patent 
which  has  been  or  may,  hereafter  be  granted  from  the 
right  to  contest  the  same  in  any  judicial  court,  in  any 
action  in  which  its  validity  may  come  in  question. 

Section  12.  And  be  it  further  enacted,  That  the  Commis- 


THE  PATENT  ACT  OF  1842  889 

sioner  of  Patents  shall  have  power  to  make  all  such  regu- 
lations, in  respect  to  the  taking  of  evidence  to  be  used  in 
contested  cases  before  him,  as  may  be  just  and  reason- 
able. And  so  much  of  the  act  to  which  this  is  additional, 
as  provides  for  a  board  of  examiners,  is  hereby  repealed. 

Section  13.  And  be  it  further  enacted,  That  there  be 
paid  annually,  out  of  the  patent  fund,  to  the  said  Chief 
Justice,  in  consideration  of  the  duties  herein  imposed, 
the  sum  of  one  hundred  dollars. 

Approved  March  3,  1839. 

Repealed  July  8,  1870.  16  Statutes  at  Large,  Chap. 
230,  Section  111,  p.  216. 

PATENT   ACT  OF   1842 

5  Statutes  at  Large,  543 

An  Act  in  addition  to  an  act  to  promote  the  progress  of 
the  useful  arts,  and  to  repeal  all  acts  and  parts  of  acts 
heretofore  made  for  that  purpose. 

Section  1.  Be  it  enacted  by  the  Senate  and  House  of 
Representatives  of  the  United  States  of  America  in  Congress 
assembled,  That  the  Treasurer  of  the  United  States  be,  and 
he  hereby  is,  authorized  to  pay  back,  out  of  the  patent 
fund,  any  sum  or  sums  of  money,  to  any  person  who  shall 
have  paid  the  same  into  the  Treasury,  or  to  any  receiver 
or  depositary  to  the  credit  of  the  Treasurer,  as  for  fees 
accruing  at  the  Patent  Office  through  mistake,  and  which 
are  not  provided  to  be  paid  by  existing  laws,  certificate 
thereof  being  made  to  the  said  Treasurer  by  the  Com- 
missioner of  Patents. 

Section  2.  And  be  it  further  enacted,  That  the  third 
section  of  the  act  of  March,  eighteen  hundred  and  thirty- 


890  THE    PATENT  STATUTES 

Beven,  which  authorizes  the  renewing  of  patents  lost  prior 
to  the  fifteenth  of  December,  eighteen  hundred  and  thirty- 
six,  is  extended  to  patents  granted  prior  to  said  fifteenth 
day  of  December,  though  they  may  have  been  lost  sub- 
sequently: Provided  however,  The  same  shall  not  have  been 
recorded  anew  under  the  provisions  of  said  act. 

Section  3.  And  be  it  further  enacted,  That  any  citizen 
or  citizens,  or  alien  or  aliens,  having  resided  one  year  in 
the  United  States,  and  taken  the  oath  of  his  or  their  in- 
tention to  become  a  citizen  or  citizens,  who  by  his,  her, 
or  their  own  industry,  genius,  efforts,  and  expense,  may 
have  invented  or  produced  any  new  and  original  design 
for  a  manufacture,  whether  of  metal  or  other  material  or 
materials,  or  any  new  and  original  design  for  the  printing 
of  woolen,  silk,  cotton,  or  other  fabrics,  or  any  new  and 
original  design  for  a  bust,  statue,  or  bas-relief  or  composi- 
tion in  alto  or  basso  relievo,  or  any  new  and  original  im- 
pression or  ornament,  or  to  be  placed  on  any  article  of 
manufacture,  the  same  being  formed  in  marble  or  other 
material,  or  any  new  and  useful  pattern,  or  print,  or  pic- 
ture, to  be  either  worked  into  or  worked  on,  or  printed  or 
painted  or  cast  or  otherwise  fixed  on,  any  article  of  manu- 
facture, or  any  new  and  original  shape  or  configuration  of 
any  article  of  manufacture  not  known  or  used  by  others 
before  bis,  her,  or  their  invention  or  production  thereof, 
and  prior  to  the  time  of  his,  her,  or  their  application  for  a 
patent  therefor,  and  who  shall  desire  to  obtain  an  exclu- 
sive property  or  right  therein  to  make,  use,  and  sell  and 
vend  the  same,  or  copies  of  the  same,  to  others,  by  them 
to  be  made,  used,  and  sold,  may  make  application  in 
writing  to  the  Commissioner  of  Patents  expressing  such 
desire,  and  the  Commissioner,  on  due  proceedings  had, 
may  grant  a  patent  therefor,  as  in  the  case  now  of  applica- 
tion for  a  patent:  Provided,  That  the  fee  in  such  cases, 


THE  PATENT  ACT  OF  1842  891 

which  by  the  now  existing  laws  would  be  required  of  the 
particular  applicant,  shall  be  one-half  the  sum,  and  that 
the  duration  of  said  patent  shall  be  seven  years,  and  that 
all  the  regulations  and  provisions  which  now  apply  to  the 
obtaining  or  protection  of  patents  not  inconsistent  with 
the  provisions  of  this  act  shall  apply  to  applications 
under  this  section. 

Section  4.  And  be  it  furtlier  enacted,  That  the  oath  re- 
quired for  applicants  for  patents  may  be  taken,  when  the 
applicant  is  not,  for  the  time  being,  residing  in  the  United 
States,  before  any  minister,  plenipotentiary,  charge 
d'affaires,  consul,  or  commercial  agent  holding  commis- 
sion under  the  government  of  the  United  States,  or  be- 
fore any  notary  public  of  the  foreign  country  in  which 
such  applicant  may  be. 

Section  5.  And  be  it  further  enacted,  That  if  any  person 
or  persons  shall  paint  or  print  or  mould,  cast,  carve,  or 
engrave,  or  stamp,  upon  anything  made,  used,  or  sold, 
by  him,  for  the  sole  making  or  selling  which  he  hath  not 
or  shall  not  have  obtained  letters-patent,  the  name  or  any 
imitation  of  the  name  of  any  other  person  who  hath  or 
shall  have  obtained  letters-patent  for  the  sole  making 
and  vending  of  such  thing,  without  consent  of  such  pat- 
entee, or  his  assigns  or  legal  representatives;  or  if  any 
person,  upon  any  such  thing  not  having  been  purchased 
from  the  patentee,  or  some  person  who  purchased  it 
from  or  under  such  patentee,  or  not  having  the  license  or 
consent  of  such  patentee,  or  his  assigns  or  legal  repre- 
sentatives, shall  write,  paint,  print,  mould,  cast,  carve, 
engrave,  stamp,  or  otherwise  make  or  affix  the  word 
"patent,"  or  the  words  " letters-patent,"  or  the  word 
"patentee,"  or  any  word  or  words  of  like  kind,  meaning, 
or  import,  with  the  view  or  intent  of  imitating  or  counter- 
feiting the  stamp,  mark,  or  other  device,  of  the  patentee, 


892  THE    PATENT   STATUTES 

or  shall  affix  the  same,  or  any  word,  stamp,  or  device, 
of  like  import,  on  any  unpatented  article,  for  the  purpose 
of  deceiving  the  public,  he,  she,  or  they,  so  offending, 
shall  be  liable  for  such  offence  to  a  penalty  of  not  less  than 
our  hundred  dollars,  with  costs,  to  be  recovered  by  action 
in  any  of  the  circuit  courts  of  the  United  States,  or  in  any 
of  the  district  courts  of  the  United  States  having  the 
powers  and  jurisdiction  of  a  circuit  court;  one-half  of  which 
penalty,  as  recovered,  shall  be  paid  to  the  patent  fund, 
and  the  other  half  to  any  person  or  persons  who  shall  sue 
for  the  same. 

Section  6.  And  be  it  further  enacted,  That  all  patentees 
and  assignees  of  patents  hereafter  granted  are  hereby 
required  to  stamp,  engrave,  or  cause  to  be  stamped  or 
engraved,  on  each  article  vended,  or  offered  for  sale, 
the  date  of  the  patent;  and  if  any  person  or  persons, 
patentees,  or  assignees,  shall  neglect  to  do  so,  he,  she,  or 
they  shall  be  liable  to  the  same  penalty,  to  be  recovered 
and  disposed  of  in  the  manner  specified  in  the  foregoing 
fifth  section  of  this  act. 

Approved  August  29,  1842. 

Repealed  July  8,  1870.  16  Statutes  at  Large,  Chap. 
230,  Section  111,  p.  216. 

PATENT  ACT  OF  1848 

9  Statutes  at  Large,  231 

An  Act  to  provide  additional  Examiners  in  the  Patent 
Office,  and  for  other  Purposes 

Section  1 .  Be  it  enacted  by  the  Senate  and  House  of  Rep- 
resentatives of  the  United  States  of  America  in  Congress 
assembled,  That  there  shall  be  appointed,  in  the  manner 


THE  PATENT  ACT  OF  1848  893 

provided  in  the  .second  section  of  the  act  entitled  "An  Act 
to  promote  the  progress  of  useful  arts,  and  to  repeal  all 
acts  and  parts  of  acts  heretofore  made  for  that  purpose," 
approved  July  fourth,  eighteen  hundred  and  thirty-six, 
two  principal  examiners,  and  two  assistant  examiners,  in 
addition  to  the  number  of  examiners  now  employed  in 
the  Patent  Office;  and  that  hereafter  each  of  the  principal 
examiners  employed  in  the  Patent  Office  shall  receive  an 
annual  salary  of  twenty-five  hundred  dollars,  and  each 
of  the  assistant  examiners  an  annual  salary  of  fifteen 
hundred  dollars:  Provided,  That  the  power  to  extend 
patents,  now  vested  in  the  board  composed  of  the  Secre- 
tary of  State,  Commissioner  of  Patents,  and  Solicitor  of 
the  Treasury,  by  the  eighteenth  section  of  the  act  ap- 
proved July  fourth,  eighteen  hundred  and  thirty-six, 
respecting  the  Patent  Office,  shall  hereafter  be  vested 
solely  in  the  Commissioner  of  Patents ;  and  when  an  appli- 
cation is  made  to  him  for  the  extension  of  a  patent  accord- 
ing to  said  eighteenth  section,  and  sixty  days'  notice  given 
thereof,  he  shall  refer  the  case  to  the  principal  examiner 
having  charge  of  the  class  of  inventions  to  which  said 
case  belongs,  who  shall  make  full  report  to  said  Commis- 
sioner of  the  said  case,  and  particularly  whether  the  inven- 
tion or  improvement  secured  in  the  patent  was  new  and 
patentable  when  patented;  and  thereupon  the  said  Com- 
missioner shall  grant  or  refuse  the  extension  of  said  pat- 
ent, upon  the  same  principles  and  rules  that  have  governed 
said  board;  but  no  patent  shall  be  extended  for  a  longer 
term  than  seven  years. 

Section  2.  And  be  it  further  enacted,  That  hereafter  the 
Commissioner  of  Patents  shall  require  a  fee  of  one  dollar 
for  recording  any  assignment,  grant,  or  conveyance  of  the 
whole  or  any  part  of  the  interest  in  letters-patent,  or  power 
of  attorney,  or  license  to  make  or  use  the  thing  patented, 


894  THE    PATENT  STATUTES 

when  such  instrument  shal]  ao1  exceed  three  hundred 
words;  the  sum  of  two  dollars  when  it  shall  exceed  three 
hundred  and  shall  not  exceed  one  thousand  words;  and 
the  sum  of  three  dollars  when  it  shall  exceed  one  thousand 
words;  which  fees  shall  in  all  cases  be  paid  in  advance. 

Section  3.  And  be  it  further  enacted,  That  there  shall  be 
appointed  in  manner  aforesaid,  two  clerks,  to  be  employed 
in  copying  and  recording,  and  in  other  services  in  the 
Patent  Office,  who  shall  each  be  paid  a  salary  of  one  thou- 
sand two  hundred  dollars  per  annum. 

Section  4.  And  be  it  further  enacted,  That  the  Commis- 
sioner of  Patents  is  hereby  authorized  to  send  by  mail, 
free  of  postage,  the  annual  reports  of  the  Patent  Office, 
in  the  same  manner  in  which  he  is  empowered  to  send  let- 
ters and  packages  relating  to  the  business  of  the  Patent 
Office. 

Approved  May  27,  1848. 

Repealed  July  8,  1870.  16  Statutes  at  Large,  Chap. 
230,  Section  111,  p.  216. 

PATENT  ACT  OF   1849 

9  Statutes  at  Large,  395 

Section  2  of  the  Act  entitled  "An  Act  to  establish  the 
Home  Department,  and  to  provide  for  the  Treasury 
Department  an  Assistant  Secretary  of  the  Treasury 
and  a  Commissioner  of  the  Customs  " 

Section  2.  And  be  it  further  enacted,  That  the  Secre- 
tary of  the  Interior  shall  exercise  and  perform  all  the  acts 
of  supervision  and  appeal  in  regard  to  the  office  of  Com- 
missioner of  Patents,  now  exercised  by  the  Secretary  of 
State;  and  the  said  Secretary  of  the  Interior  shall  sign 


THE  PATENT  ACT  OF  1852  895 

all  requisitions  for  the  advance  or  payment  of  money  out 
of  the  Treasury  on  estimates  or  accounts,  subject  to  the 
same  adjustment  or  control  now  exercised  on  similar 
estimates  or  accounts  by  the  First  or  Fifth  Auditor  and 
First  Comptroller  of  the  Treasury. 

Approved  March  3,  1849. 

Repealed  July  8,  1870.  16  Statutes  at  Large,  Chap. 
230,  Section  111,  p.  216. 

PATENT  ACT  OF   1852 

10  Statutes  at  Large,  75 

An  Act  in  addition  to  "An  Act  to  Promote  the  Progress 
of  the  Useful  Arts  " 

Section  1.  Be  it  enacted  by  the  Senate  and  House  of  Rep- 
resentatives of  the  United  States  of  America  in  Congress  as- 
sembled, That  appeals  provided  for  in  the  eleventh  sec- 
tion of  the  act  entitled  An  Act  in  addition  to  an  act  to 
promote  the  progress  of  the  useful  arts,  approved  March 
the  third,  eighteen  hundred  and  thirty-nine,  may  also 
be  made  to  either  of  the  assistant  judges  of  the  Circuit 
Court  of  the  District  of  Columbia,  and  all  the  powers, 
duties,  and  responsibilities  imposed  by  the  aforesaid  act, 
and  conferred  upon  the  chief  judge,  are  hereby  imposed 
and  conferred  upon  each  of  the  said  assistant  judges. 

Section  2.  And  be  it  further  enacted,  That  in  case  ap- 
peals shall  be  made  to  the  said  chief  judge,  or  to  either  of 
the  said  assistant  judges,  the  Commissioner  of  Patents 
shall  pay  to  such  chief  judge  or  assistant  judge  the  sum 
of  twenty-five  dollars,  required  to  be  paid  by  the  appel- 
lant into  the  Patent  Office  by  the  eleventh  section  of  said 
act,  on  said  appeal. 


89G  THE    PATENT   STATUTES 

Se(  HON  3.  -I/"/  be  it  further  enacted,  That  section  thir- 
teen of  the  aforesaid  act,  approved  March  the  third, 
eighteen  hundred  and  thirty-nine,  is  hereby  repealed. 

Appro1!  bd  August  30,  1852. 

Repealed  July  8,  1870.  16  Statutes  at  Large,  Chap.  230, 
Section  111,  p.  216. 


PATENT   ACT  OF  FEBRUARY   18,    1861 
12  Statutes  at  Large,  130 

An  Act  to  extend  the  right  of  appeal  from  the  decisions  of 
Circuit  Courts  to  the  Supreme  Court  of  the  United 

States. 

Skction  1.  Be  it  enacted  by  the  Senate  and  House  of 
Representatives  of  the  United  States  of  America  in  Con- 
gress assembled,  That  from  all  judgments  and  decrees  of 
any  Circuit  Court  rendered  in  any  action,  suit,  contro- 
versy, or  case,  at  law  or  in  equity,  arising  under  any  law 
of  the  United  States  granting  or  confirming  to  authors 
the  exclusive  right  to  their  respective  writings,  or  to  in- 
ventors the  exclusive  right  to  their  inventions  or  dis- 
coveries, a  writ  of  error  or  appeal,  as  the  case  may  require, 
shall  lie,  at  the  instance  of  either  party,  to  the  Supreme 
Court  of  the  United  States,  in  the  same  manner  and 
under  the  same  circumstances  as  is  now  provided  by  law  in 
other  judgments  and  decrees  of  such  circuit  courts,  with- 
out regard  to  the  sum  or  value  in  controversy  in  the 
action. 

Approved  February  18,  1861. 

Repealed  July  8,  1870.  16  Statutes  at  Large,  Chap. 
230,  Section  111,  p.  216. 


THE  PATENT  ACT  OF  1801  897 

PATENT  ACT  OF   MARCH   2,    18G1 

12  Statutes  at  Large,  246 

An  Act  in  Addition  to  "An  Act  to  promote  the  Progress 
of  the  useful  Arts  " 

Section  1.  Be  it  enacted  by  the  Senate  and  House  of 
Representatives  of  the  United  States  of  America  in  Congress 
assembled,  That  the  Commissioner  of  Patents  may  es- 
tablish rules  for  taking  affidavits  and  depositions  required 
in  cases  pending  in  the  Patent  Office,  and  such  affidavits 
and  depositions  may  be  taken  before  any  justice  of  the 
peace,  or  other  officer  authorized  by  law  to  take  deposi- 
tions to  be  used  in  the  courts  of  the  United  States,  or  in 
the  State  courts  of  any  State  where  such  officer  shall  re- 
side; and  in  any  contested  case  pending  in  the  Patent 
Office  it  shall  be  lawful  for  the  clerk  of  any  court  of  the 
United  States  for  any  district  or  Territory,  and  he  is 
hereby,  required  upon  the  application  of  any  party  to  such 
contested  case,  or  the  agent  or  attorney  of  such  party, 
to  issue  subpoenas  for  any  witnesses  residing  or  being 
within  the  said  district  or  Territory,  commanding  such 
witnesses  to  appear  and  testify  before  any  justice  of  the 
peace,  or  other  officer  as  aforesaid,  residing  within  the 
said  district  or  Territory,  at  any  time  and  place  in  the 
subpoena  to  be  stated;  and  if  any  witness,  after  being  duly 
served  with  such  subpoena,  shall  refuse  or  neglect  to  ap- 
pear, or,  after  appearing,  shall  refuse  to  testify  (not 
being  privileged  from  giving  testimony),  such  refusal  or 
neglect  being  proved  to  the  satisfaction  of  any  judge  of 
the  court  whose  clerk  shall  have  issued  such  subpoena, 
said  judge  may  thereupon  proceed  to  enforce  obedience 


£98  Tm';     I'VI'IAT    STATUTES 

to  the  process,  or  to  punish  the  disobedience  in  like  manner 
as  any  court  of  the  United  Stales  may  do  in  case  of  dis- 
obedience to  process  of  subpoena  ad  testificandum  issued 
by  such  court;  and  witnesses  in  such  cases  shall  be  al- 
lowed the  same  compensation  as  is  allowed  to  witnesses 
attending  the  courts  of  the  United  States:  Provided,  That 
no  witness  shall  be  required  to  attend  at  any  place  more 
than  forty  miles  from  the  place  where  the  subpoena  shall 
be  served  upon  him  to  give  a  deposition  under  this  law: 
Provided  also,  That  no  witness  shall  be  deemed  guilty 
of  contempt  for  refusing  to  disclose  any  secret  invention 
made  or  owned  by  him:  And  provided  further,  That  no 
witness  shall  be  deemed  guilty  of  contempt  for  disobeying 
any  subpoena  directed  to  him  by  virtue  of  this  act,  unless 
his  fees  for  going  to,  returning  from,  and  one  day's  at- 
tendance at  the  place  of  examination,  shall  be  paid  or  ten- 
dered to  him  at  the  time  of  the  service  of  the  subpoena. 

Section  2.  And  be  it  further  enacted,  That  for  the  pur- 
poses of  securing  greater  uniformity  of  action  in  the  grant 
and  refusal  of  letters-patent,  there  shall  be  appointed  by 
the  President,  by  and  with  the  advice  and  consent  of  the 
Senate,  three  examiners  in  chief,  at  an  annual  salary  of 
three  thousand  dollars  each,  to  be  composed  of  persons  of 
competent  legal  knowledge  and  scientific  ability,  whose 
duty  it  shall  be,  on  the  written  petition  of  the  applicant 
for  that  purpose  being  filed,  to  revise  and  determine  upon 
the  validity  of  decisions  made  by  examiners  when  ad- 
verse to  the  grant  of  letters-patent;  and  also  to  revise  and 
determine  in  like  manner  upon  the  validity  of  the  decisions 
of  examiners  in  interference  case's,  and  when  required  by 
the  Commissioner  in  applications  for  the  extension  of 
patents,  and  to  perform  such  other  duties  as  may  be  as- 
signed to  them  by  the  Commissioner;  that  from  their 
decisions  appeals  may  be  taken  to  the  Commissioner  of 


THE    PATENT   ACT   OF    1861  <S9() 

Patents  in  person,  upon  payment  of  the  fee  hereinafter 
prescribed;  that  the  said  examiners  in  chief  shall  be 
governed  in  their  action  by  the  rules  to  be  prescribed  by 
the  Commissioner  of  Patents. 

Section  3.  And  be  it  further  enacted,  That  no  appeal 
shall  be  allowed  to  the  examiners  in  chief  from  the  de- 
cisions of  the  primary  examiners,  except  in  interference 
cases,  until  after  the  application  shall  have  been  twice 
rejected;  and  the  second  examination  of  the  application 
by  the  primary  examiner  shall  not  be  had  until  the  ap- 
plicant, in  view  of  the  references  given  on  the  first  re- 
jection, shall  have  renewed  the  oath  of  invention,  as  pro- 
vided for  in  the  seventh  section  of  the  act  entitled  "An 
act  to  promote  the  progress  of  the  useful  arts,  and  to  re- 
peal all  acts  and  parts  of  acts  heretofore  made  for  that 
purpose,"  approved  July  fourth,  eighteen  hundred  and 
thirty-six. 

Section  4.  And  be  it  further  enacted,  That  the  salary  of 
the  Commissioner  of  Patents,  from  and  after  the  passage 
of  this  act,  shall  be  four  thousand  five  hundred  dollars 
per  annum,  and  the  salary  of  the  chief  clerk  of  the  Patent 
Office  shall  be  two  thousand  five  hundred  dollars,  and  the 
salary  of  the  librarian  of  the  Patent  Office  shall  be  eight- 
een hundred  dollars. 

Section  5.  And  be  it  further  enacted,  That  the  Commis- 
sioner of  Patents  is  authorized  to  restore  to  the  respective 
applicants,  or  when  not  removed  by  them,  to  otherwise 
dispose  of  such  of  the  models  belonging  to  rejected  appli- 
cations as  he  shall  not  think  necessary  to  be  preserved. 
The  same  authority  is  also  given  in  relation  to  all  models 
accompanying  applications  for  designs.  He  is  further 
authorized  to  dispense  in  future  with  models  of  designs 
when  the  design  can  be  sufficiently  represented  by  a 
drawing. 


900  THE    PATENT  STATUTES 

Section  G.  And  be  it  further  enacted,  That  the  tenth 
sectioD  of  the  act  approved  the  third  of  March,  eighteen 
hundred  and  thirty-seven,  authorizing  the  appointment 
of  agents  for  the  transportation  of  models  and  specimens 
to  the  Patent  Office,  is  hereby  repealed. 

Section  7.  And  be  it  further  enacted,  That  the  Com- 
missioner is  further  authorized,  from  time  to  time,  to 
appoint,  in  the  manner  already  provided  for  by  law,  such 
an  additional  number  of  principal  examiners,  first  assistant 
examiners,  and  second  assistant  examiners  as  may  be 
required  to  transact  the  current  business  of  the  office  with 
despatch,  provided  the  whole  number  of  additional  ex- 
aminers shall  not  exceed  four  of  each  class,  and  that  the 
total  annual  expenses  of  the  Patent  Office  shall  not  ex- 
ceed the  annual  receipts. 

Section  8.  And  be  it  further  enacted,  That  the  Com- 
missioner may  require  all  papers  filed  in  the  Patent  Office, 
if  not  correctly,  legibly,  and  clearly  written,  to  be  printed 
at  the  cost  of  the  parties  filing  such  papers;  and  for  gross 
misconduct  he  may  refuse  to  recognize  any  person  as  a 
patent  agent,  either  generally  or  in  any  particular  case; 
but  the  reasons  of  the  Commissioner  for  such  refusal  shall 
be  duly  recorded,  and  be  subject  to  the  approval  of  the 
President  of  the  United  States. 

Section  9.  And  be  it  further  enacted,  That  no  money 
paid  as  a  fee,  on  any  application  for  a  patent  after  the 
passage  of  this  act,  shall  be  withdrawn  or  refunded,  nor 
shall  the  fee  paid  on  filing  a  caveat  be  considered  as  part 
of  the  sum  required  to  be  paid  on  filing  a  subsequent  ap- 
plication for  a  patent  for  the  same  invention.  That  the 
three  months'  notice  given  to  any  caveator,  in  pursuance 
of  the  requirements  of  the  twelfth  section  of  the  act  of 
July  fourth,  eighteen  hundred  and  thirty-six,  shall  be 
computed  from  the  day  on  which  such  notice  is  deposited 


THE    PATENT   ACT   OF    1861  00 1 

in  the  post-office  at  Washington,  with  the  regular  time  for 
the  transmission  of  the  same  added  thereto,  which  time 
shall  be  indorsed  on  the  notice;  and  that  so  much  of  the 
thirteenth  section  of  the  act  of  Congress,  approved  July 
fourth,  eighteen  hundred  and  thirty-six,  as  authorizes 
the  annexing  to  letters-patent  of  the  description  and  speci- 
fication of  additional  improvements  is  hereby  repealed, 
and  in  all  cases  where  additional  improvements  would  now 
be  admissible,  independent  patents  must  be  applied  for. 

Section  10.  And  be  it  further  enacted,  That  all  laws  now 
in  force  fixing  the  rates  of  the  Patent  Office  fees  to  be  paid, 
and  discriminating  between  the  inhabitants  of  the  United 
States  and  those  of  other  countries,  which  shall  not  dis- 
criminate against  the  inhabitants  of  the  United  States, 
are  hereby  repealed,  and  in  their  stead  the  following 
rates  are  established : — 

On  filing  each  caveat,  ten  dollars. 

On  filing  each  original  application  for  a  patent,  except 
for  a  design,  fifteen  dollars. 

On  issuing  each  original  patent,  twenty  dollars. 

On  every  appeal  from  the  examiner  in  chief  to  the  Com- 
missioner, twenty  dollars. 

On  every  application  for  the  reissue  of  a  patent,  thirty 
dollars. 

On  every  application  for  the  extension  of  a  patent,  fifty 
dollars;  and  fifty  dollars  in  addition,  on  the  granting  of 
every  extension. 

On  filing  each  disclaimer,  ten  dollars. 

For  certified  copies  of  patents  and  other  papers,  ten 
cents  per  hundred  words. 

For  recording  every  assignment,  agreement,  power  of  at- 
torney, and  other  papers,  of  three  hundred  words  or  under, 
one  dollar. 

For  recording   every   assignment,   and   other   papers, 


902  I'll  I-    P  A  TENT   STATUTES 

over  three  hundred  and  under  one  thousand  words,  two 
dollars. 

For  recording  every  assignment  or  other  writing,  if 
over  one  thousand  words,  three  dollars. 

For  copies  of  drawings,  the  reasonable  cost  of  making 
the  same. 

Section  11.  And  be  it  further  enacted,  That  any  citizen 
or  citizens,  or  alien  or  aliens,  having  resided  one  year  in 
the  United  States,  and  taken  the  oath  of  his  or  their  in- 
tention to  become  a  citizen  or  citizens,  who,  by  his,  her, 
or  their  own  industry,  genius,  efforts,  and  expense  may 
have  invented  or  produced  any  new  and  original  design, 
or  a  manufacture,  whether  of  metal  or  other  material  or 
materials,  and  original  design  for  a  bust,  statue,  or  bas- 
relief,  or  composition  in  alto  or  baso  relievo,  or  any  new 
and  original  impression  or  ornament,  or  to  be  placed  on  any 
article  of  manufacture,  the  same  being  formed  in  marble 
or  other  material,  or  any  new  and  useful  pattern,  or  print, 
or  picture,  to  be  either  worked  into  or  worked  on,  or 
printed,  or  painted,  or  cast,  or  otherwise  fixed  on  any 
article  of  manufacture,  or  any  new  and  original  shape  or 
configuration  of  any  article  of  manufacture,  not  known 
or  used  by  others  before  his,  her,  or  their  invention  or 
production  thereof,  and  prior  to  the  time  of  his,  her,  or 
their  application  for  a  patent  therefor,  and  who  shall 
desire  to  obtain  an  exclusive  property  or  right  therein  to 
make,  use,  and  sell,  and  vend  the  same,  or  copies  of  the 
same,  to  others,  by  them  to  be  made,  used,  and  sold, 
may  make  application,  in  writing,  to  the  Commissioner 
of  Patents,  expressing  such  desire;  and  the  Commissioner, 
on  due  proceedings  had,  may  grant  a  patent  therefor, 
as  in  the  case  now  of  application  for  a  patent,  for  the  term 
of  three  and  one-half  years,  or  for  the  term  of  seven  years, 
or  for  the  term  of  fourteen  years,  as  the  said  applicant  may 


THE  PATENT  ACT  OF  1861  903 

elect  in  his  application:  Prodded,  That  the  fee  to  be  paid 
in  such  applical  ion  shall  be  for  the  term  of  three  years  and 
six  months,  ten  dollars,  for  seven  years,  fifteen  dollars, 
and  for  fourteen  years,  thirty  dollars:  And  provided,  That 
the  patentees  of  designs  under  this  act  shall  be  entitled 
to  the  extension  of  their  respective  patents  for  the  term 
of  seven  years,  from  the  day  on  which  said  patent  shall 
expire,  upon  the  same  terms  and  restrictions  as  are  now 
provided  for  the  extension  of  letters-patent. 

Section  12.  And  be  it  further  enacted,  That  all  applica- 
tions for  patents  shall  be  completed  and  prepared  for 
examination  within  two  years  after  the  filing  of  the  peti- 
tion, and  in  default  thereof  they  shall  be  regarded  as 
abandoned  by  the  parties  thereto;  unless  it  be  shown  to  the 
satisfaction  of  the  Commissioner  of  Patents  that  such 
delay  was  unavoidable;  and  all  applications  now  pending 
shall  be  treated  as  if  filed  after  the  passage  of  this  act,  and 
all  applications  for  the  extension  of  patents  shall  be  filed 
at  least  ninety  days  before  the  expiration  thereof;  and 
notice  of  the  day  set  for  the  hearing  of  the  case  shall  be 
published,  as  now  required  by  law,  for  at  least  sixty  days. 

Section  13.  And  be  it  further  enacted,  That  in  all  cases 
where  an  article  is  made  or  vended  by  any  person  under 
the  protection  of  letters-patent,  it  shall  be  the  duty  of 
such  person  to  give  sufficient  notice  to  the  public  that 
said  article  is  so  patented,  either  by  fixing  thereon  the 
word  " patented,"  together  with  the  day  and  year  the 
patent  was  granted;  or  when,  from  the  character  of  the 
article  patented,  that  may  be  impracticable,  by  envelop- 
ing one  or  more  of  the  said  articles,  and  affixing  a  label 
to  the  package,  or  otherwise  attaching  thereto  a  label 
on  which  the  notice,  with  the  date,  is  printed;  on  failure 
of  which,  in  any  suit  for  the  infringement  of  letters- 
patent  by  the  party  failing  so  to  mark  the  article  the  right 


904  THE    PATENT  STATUTES 

to  which  is  infringed  upon,  no  damage  shall  be  recovered 
by  the  plaintiff,  excepl  on  proof  that  the  defendant  was 
duly  notified  of  the  infringement,  and  continued  after 
such  notice  to  make  or  vend  the  article  patented.    And  the 

sixth  section  of  the  act  entitled  "An  act  in  addition  to  an 
act  to  promote  the  progress  of  the  useful  arts,"  and  so 
forth,  approved  the  twenty-ninth  day  of  August,  eighteen 
hundred  and  forty-two,  be,  and  the  same  is  hereby,  re- 
pealed. 

Section  14.  And  be  it  further  enacted,  That  the  Com- 
missioner of  Patents  be,  and  he  is  hereby,  authorized  to 
print,  or  in  his  discretion  to  cause  to  be  printed,  ten  copies 
of  the  description  and  claims  of  all  patents  which  may  here- 
after be  granted,  and  ten  copies  of  the  drawings  of  the 
same,  when  drawings  shall  accompany  the  patents: 
Provided,  The  cost  of  printing  the  text  of  said  descriptions 
and  claims  shall  not  exceed,  exclusive  of  stationery,  the 
sum  of  two  cents  per  hundred  words  for  each  of  said 
copies,  and  the  cost  of  the  drawing  shall  not  exceed  fifty 
cents  per  copy;  one  copy  of  the  above  number  shall  be 
printed  on  parchment  to  be  affixed  to  the  letters-patent; 
the  work  shall  be  under  the  direction,  and  subject  to  the 
approval,  of  the  Commissioner  of  Patents,  and  the  expense 
of  the  said  copies  shall  be  paid  for  out  of  the  patent  fund. 

Section  15.  And  be  it  further  enacted,  That  printed 
copies  of  the  letters-patent  of  the  United  States,  with  the 
seal  of  the  Patent  Office  affixed  thereto  and  certified  and 
signed  by  the  Commissioner  of  Patents,  shall  be  legal 
evidence  of  the  contents  of  said  letters-patent  in  all 
cases. 

Section  16.  And  be  it  further  enacted,  That  all  patents 
hereafter  granted  shall  remain  in  force  for  the  term  of 
seventeen  years  from  the  date  of  issue;  and  all  extension 
of  such  patents  is  hereby  prohibited. 


THE  PATENT  ACT  OF  1863  005 

Section  17.  And  be  it  further  enacted,  That  all  acts  and 
parts  of  acts  heretofore  passed,  which  are  inconsistent 
with  the  provisions  of  this  act,  be,  and  the  same  are 
hereby,  repealed. 

Approved  March  2,  1861. 

Repealed  July  8,  1870.  16  Statutes  at  Large,  Chap. 
230,  Section  111,  p.  216. 

PATENT   ACT   OF   1862 

12  Statutes  at  Large,  583 

Section  4  of  an  Act  making  supplemental  appropriations 
for  sundry  civil  expenses,  &c. 

Section  4.  For  the  fund  of  the  Patent  Office,  fifty 
thousand  eight  hundred  and  fifty-five  dollars  and  forty- 
nine  cents,  to  supply  a  deficiency  existing  under  the  act 
of  March  second,  eighteen  hundred  and  sixty-one,  en- 
titled "An  act  in  addition  to  an  act  to  promote  the  prog- 
ress of  the  useful  arts":  Provided,  That  the  fourteenth 
section  of  said  act  be,  and  the  same  is  hereby,  repealed. 

Approved  July  16,  1862. 

PATENT   ACT  OF   1863 

12  Statutes  at  Large,  796 

An  Act  to  amend  an  Act  entitled  "An  Act  to  promote  the 
Progress  of  the  useful  .Arts" 

Section  1.  Be  it  enacted  by  the  Senate  and  House  of  Rep- 
resentatives of  the  United  States  of  America  in  Congress 
assembled,  That  so  much  of  section  seven  of  the  act  en- 
titled "An  act  to  promote  the  progress  of  the  useful  arts," 


906  THE    PATENT   STATUTES 

approved  -July  fourth,  eighteen  hundred  and  thirty-six, 
as  requires  a  renewal  of  the  oath,  be,  and  the  same  is 
hereby,  repealed. 

Section  2.  And  be  it  further  enacted,  That,  whereas 
the  falling  off  of  the  revenue  of  the  Patent  Office  required 
a  reduction  of  the  compensation  of  the  examiners  and 
clerks,  or  other  employees  in  the  office,  after  the  thirty- 
first  day  of  August,  eighteen  hundred  and  sixty-one,  that 
the  Commissioner  of  Patents  be,  and  he  is  hereby,  author- 
ized, whenever  the  revenue  of  the  office  will  justify  him 
in  so  doing,  to  pay  them  such  sums,  in  addition  to  what 
they  shall  already  have  received,  as  will  make  their  com- 
pensation the  same  as  it  was  at  that  time. 

Section  3.  And  be  it  further  enacted,  That  every  patent 
shall  be  dated  as  of  a  day  not  later  than  six  months  after 
the  time  at  which  it  was  passed  and  allowed,  and  notice 
thereof  sent  to  the  applicant  or  his  agent.  And  if  the 
final  fee  for  such  patent  be  not  paid  within  the  said  six 
months,  the  patent  shall  be  withheld,  and  the  invention 
therein  described  shall  become  public  property  as  against 
the  applicant  therefor:  Provided,  That  in  all  cases  where 
patents  have  been  allowed  previous  to  the  passage  of  this 
act,  the  said  six  months  shall  be  reckoned  from  the  date 
of  such  passage. 

Approved  March  3,  1863. 

Repealed  July  8,  1870.  16  Statutes  at  Large,  Chap. 
230,  Section  111,  p.  216. 


THE  PATENT  ACT  OF  1864  907 

PATENT   ACT  OF   1864 

13  Statutes  at  Large,  194 

An  Act  amendatory  of  an  Act  to  amend  an  Act  entitled 
"An  Act  to  promote  the  Progress  of  the  Useful  Arts," 
approved  March  three,  eighteen  hundred  and  sixty- 
three. 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled, 
That  any  person  having  an  interest  in  an  invention, 
whether  as  the  inventor  or  assignee,  for  which  a  patent 
was  ordered  to  issue  upon  the  payment  of  the  final  fee, 
as  provided  in  section  three  of  an  act  approved  March 
three,  eighteen  hundred  and  sixty-three,  but  who  has 
failed  to  make  payment  of  the  final  fee,  as  provided  by 
said  act,  shall  have  the  right  to  make  the  payment  of 
such  fee,  and  receive  the  patent  withheld  on  account  of 
the  non-payment  of  said  fee,  provided  such  payment  be 
made  within  six  months  from  the  date  of  the  passage 
of  this  act:  Provided,  That  nothing  herein  shall  be  so  con- 
strued as  to  hold  responsible  in  damages  any  persons  who 
have  manufactured  or  used  any  article  or  thing  for  which 
a  patent,  as  aforesaid,  was  ordered  to  be  issued. 

Approved  June  25,  1864. 

Repealed  July  8,  1870.  16  Statutes  at  Large,  Chap. 
230,  Section  111,  p.  216. 


908  THE    PATENT  STATUTES 

PATENT   ACT   OF   1865 

13  Statutes  at  Large,  533 

An  Act  amendatory  of  "An  Act  to  amend  an  Act  entitled 
An  Act  to  promote  the  Progress  of  the  useful  Arts,' 
approved  March  three,  eighteen  hundred  and  sixty- 
three" 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled, 
That  any  persons  having  an  interest  in  an  invention, 
whether  as  inventor  or  assignee,  for  which  a  patent  was 
ordered  to  issue  upon  the  payment  of  the  final  fee,  as  pro- 
vided in  section  three  of  an  act  approved  March  three, 
eighteen  hundred  and  sixty-three,  but  who  has  failed  to 
make  payment  of  the  final  fee  as  provided  in  said  act, 
shall  have  the  right  to  make  an  application  for  a  patent 
for  his  invention,  the  same  as  in  the  case  of  an  original 
application,  provided  such  application  be  made  within 
two  years  after  the  date  of  the  allowance  of  the  original 
application :  Provided,  That  nothing  herein  shall  be  so  con- 
strued as  to  hold  responsible  in  damages  any  persons  who 
have  manufactured  or  used  any  article  or  thing  for  which 
a  patent  aforesaid  was  ordered  to  issue.  This  act  shall 
apply  to  all  cases  now  in  the  Patent  Office,  and  also  to 
such  as  shall  hereafter  be  filed.  And  all  acts  or  parts  of 
acts  inconsistent  with  this  act  are  hereby  repealed. 

Approved  March  3,  1865. 

Repealed  July  8,  1870.  16  Statutes  at  Large,  Chap. 
230,  Section  111,  p.  216. 


THE    PATENT   ACT   OF    1870  (.  »<>'.• 

PATENT  STATUTE  OF  1866 

14  Statutes  at  Large,  76 

An  Act  in  Amendment  of  an  Act  to  promote  the  Progress 
of  the  Useful  Arts,  and  the  Acts  in  Amendment  of  an 
Addition  thereto. 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled, 
That  upon  appealing  for  the  first  time  from  the  decision 
of  the  primary  examiner  to  the  examiners-in-chief  in  the 
Patent  Office,  the  appellant  shall  pay  a  fee  of  ten  dollars 
into  the  Patent  Office,  to  the  credit  of  the  patent  fund: 
and  no  appeal  from  the  primary  examiner  to  the  examiners- 
in-chief  shall  hereafter  be  allowed  until  the  appellant  shall 
pay  said  fee. 

Approved  June  27,  1866. 

Repealed  July  8,  1870.  16  Statutes  at  Large,  Chap. 
230,  Section  111,  p.  216. 

CONSOLIDATED  PATENT  ACT  OF  1870 

16  Statutes  at  Large,  198 

An  Act  to  revise,  consolidate,  and  amend  the  Statutes, 
relating  to  Patents  and  Copyrights 

Section  1.  Be  it  enacted  by  the  Senate  and  House  of 
Representatives  of  the  United  States  of  America  in  Congress 
assembled,  That  there  shall  be  attached  to  the  Depart- 
ment of  the  Interior  the  office,  heretofore  established, 
known  as  the  Patent  Office,  wherein  all  records,  books, 


910  I'm;   P  \'it;\ t  statutes 

models,  drawings,  specifications,  and  other  papers  and 
things  pertaining  to  patents  shall  be  safely  kept  and  pre- 
served.     [Sec  Revised  Statutes,  Section  475. J 

Section  2.  And  be  it  further  enacted,  That  the  officers 
and  employees  of  said  office  shall  continue  to  be:  one  com- 
missioner of  patents,  one  assistant  commissioner,  and 
three  exaniiners-in-chief,  to  be  appointed  by  the  Presi- 
dent, by  and  with  the  advice  and  consent  of  the  Senate; 
one  chief  clerk,  one  examiner  in  charge  of  interferences, 
i  wenty-two  principal  examiners,  twenty- two  first  assistant 
examiners,  twenty- two  second  assistant  examiners,  one 
librarian,  one  machinist,  five  clerks  of  class  four,  six  clerks 
of  class  three,  fifty  clerks  of  class  two,  forty-five  clerks  of 
class  one,  and  one  messenger  and  purchasing  clerk,  all 
all  of  whom  shall  be  appointed  by  the  Secretary  of  the 
Interior,  upon  nomination  of  the  Commissioner  of  Pat- 
ents.    [See  Revised  Statutes,  Section  476.] 

Section  3.  And  be  it  further  enacted,  That  the  Secre- 
tary of  the  Interior  may  also  appoint,  upon  like  nomina- 
tion, such  additional  clerks  of  classes  two  and  one,  and  of 
lower  grades,  copyists  of  drawings,  female  copyists,  skilled 
laborers,  laborers  and  watchmen,  as  may  be  from  time  to 
time  appropriated  for  by  Congress.  [See  Revised  Stat- 
utes, Section  169.] 

Section  4.  And  be  it  further  enacted,  That  the  annual 
salaries  of  the  officers  and  employees  of  the  Patent  Office 
shall  be  as  follows: — 

Of  the  commissioner  of  patents,  four  thousand  five  hun- 
dred dollars. 

Of  the  assistant  commissioner,  three  thousand  dollars. 

Of  the  examiners-in-chief,  three  thousand  dollars  each. 

Of  the  chief  clerk,  two  thousand  five  hundred  dollars. 

Of  the  examiner  in  charge  of  interferences,  two  thousand 
five  hundred  dollars. 


THE    PATENT   ACT   OF    L870  911 

Of  the  principal  examiners,  two  thousand  five  hundred 
dollars  each. 

Of  the  first  assistant  examiners,  one  thousand  eight  hun- 
dred dollars  each. 

Of  the  second  assistant  examiners,  one  thousand  six 
hundred  dollars  each. 

Of  the  librarian,  one  thousand  eight  hundred  dollars. 

Of  the  machinist,  one  thousand  six  hundred  dollars. 

Of  the  clerks  of  class  four,  one  thousand  eight  hundred 
dollars  each. 

Of  the  clerks  of  class  three,  one  thousand  six  hundred 
dollars  each. 

Of  the  clerks  of  class  two,  one  thousand  four  hundred 
dollars  each. 

Of  the  clerks  of  class  one,  one  thousand  two  hundred 
dollars  each. 

Of  the  messenger  and  purchasing  clerk,  one  thousand 
dollars. 

Of  laborers  and  watchmen,  seven  hundred  and  twenty 
dollars  each. 

Of  the  additional  clerks,  copyists  of  drawings,  female 
copyists,  and  skilled  laborers,  such  rates  as  may  be  fixed 
by  the  acts  making  appropriations  for  them.  [See  Re- 
vised Statutes,  Sections  477,  440,  and  167.] 

Section  5.  And  be  it  further  enacted,  That  all  officers  and 
employees  of  the  Patent  Office  shall,  before  entering  upon 
their  duties,  make  oath  or  affirmation  truly  and  faithfully 
to  execute  the  trusts  committed  to  them.  [See  Revised 
Statutes,  Sections  1756  and  1757.] 

Section  6.  And  be  it  further  enacted,  That  the  commis- 
sioner and  chief  clerk,  before  entering  upon  their  duties, 
shall  severally  give  bond,  with  sureties,  to  the  Treasurer  of 
the  United  States,  the  former  in  the  sum  of  ten  thousand 
dollars,  and  the  latter  in  the  sum  of  five  thousand  dollars, 


912  THE    PATENT   STATUTES 

conditioned  for  the  faithful  discharge  of  their  duties,  and 
thai  they  will  render  to  the  proper  officers  of  the  treasury 
a  true  account  of  all  money  received  by  virtue  of  their 
office.    [See  Revised  Statutes,  Section  479.] 

Section  7.  And  be  //further  enacted,  That  it  shall  be  the 
duty  of  the  commissioner,  under  the  direction  of  the  Sec- 
retary of  the  Interior,  to  superintend  or  perform  all  the 
duties  respecting  the  granting  and  issuing  of  patents  which 
herein  are,  or  may  hereafter  be,  by  law  directed  to  be  done; 
and  he  shall  have  charge  of  all  books,  records,  papers, 
models,  machines,  and  other  things  belonging  to  said 
office.    [See  Revised  Statutes,  Section  481.] 

Section  8.  And  be  it  further  enacted,  That  the  commis- 
sioner may  send  and  receive  by  mail,  free  of  postage, 
letters,  printed  matter,  and  packages  relating  to  the  busi- 
ness of  his  office,  including  Patent  Office  reports.  [See  19 
Statutes  at  Large,  Chap.  103,  Section  5,  p.  335;  and  20 
Statutes  at  Large,  Chap.  180,  Section  29,  p.  362.] 

Section  9.  And  be  it  further  enacted,  That  the  commis- 
sioner shall  lay  before  Congress,  in  the  month  of  January, 
annually,  a  report,  giving  a  detailed  statement  of  all 
moneys  received  for  patents,  for  copies  of  records  or  draw- 
ings, or  from  any  other  source  whatever;  a  detailed  state- 
ment of  all  expenditures  for  contingent  and  miscellaneous 
expenses;  a  list  of  all  patents  which  were  granted  during 
the  preceding  year,  designating  under  proper  heads  the 
subjects  of  such  patents;  an  alphabetical  list  of  the  pat- 
entees, with  their  places  of  residence;  a  list  of  all  patents 
which  have  been  extended  during  the  year;  and  such  other 
information  of  the  condition  of  the  Patent  Office  as  may 
be  useful  to  Congress  or  the  public.  [See  Revised  Stat- 
utes, Section  494.] 

Section  10.  And  be  it  further  enacted,  That  the 
examiners-in-chief  shall  be  persons  of   competent  legal 


THE    PATENT   A.CT   OF    1870  913 

knowledge  and  scientific'  ability,  whose  duty  it  shall  be, 
on  the  written  petition  of  the  appellant,  to  revise  and 
determine  upon  the  validity  of  the  adverse  decisions  of 
examiners  upon  applications  for  patents,  and  for  reissues 
of  patents,  and  in  interference  cases;  and  when  required  by 
the  commissioner,  they  shall  hear  and  report  upon  claims 
for  extensions,  and  perform  such  other  like  duties  as  he 
may  assign  them.    [See  Revised  Statutes,  Section  482.] 

Section  11.  And  be  it  further  enacted,  That  in  case  of  the 
death,  resignation,  absence,  or  sickness  of  the  commis- 
sioner, his  duties  shall  devolve  upon  the  assistant,  commis- 
sioner until  a  successor  shall  be  appointed,  or  such  absence 
or  sickness  shall  cease.  [See  Revised  Statutes,  Sections  177, 
178,  and  179.] 

Section  12.  And  be  it  further  enacted,  That  the  commis- 
sioner shall  cause  a  seal  to  be  provided  for  said  office,  with 
such  device  as  the  President  may  approve,  with  which  all 
records  or  papers  issued  from  said  office,  to  be  used  in 
evidence,  shall  be  authenticated.  [See  Revised  Statutes, 
Section  478.] 

Section  13.  And  be  it  further  enacted,  That  the  commis- 
sioner shall  cause  to  be  classified  and  arranged  in  suitable 
cases,  in  the  rooms  and  galleries  provided  for  that  purpose, 
the  models,  specimens  of  composition,  fabrics,  manufac- 
tures, works  of  art,  and  designs,  which  have  been  or  shall 
be  deposited  in  said  office;  and  said  rooms  and  galleries 
shall  be  kept  open  during  suitable  hours  for  public  inspec- 
tion.   [See  Revised  Statutes,  Section  484.] 

Section  14.  And  be  it  further  enacted,  That  the  commis- 
sioner may  restore  to  the  respective  applicants  such  of  the 
models  belonging  to  rejected  applications  as  he  shall  not 
think  necessary  to  be  preserved,  or  he  may  sell  or  other- 
wise dispose  of  them  after  the  application  lias  been  finally 
rejected  for  one  year,  paying  the  proceeds  into  the  treas- 


Ill  I  THE    PATENT   STATUTES 

wry.  as  other  patent  moneys  are  directed  to  be  paid.  [See 
Revised  Statutes,  Section  485.] 

Section  15.  And  be  it  further  enacted,  That  there  shall 
be  purchased,  for  the  use  of  said  office,  a  library  of  such 
scientific  works  and  periodicals,  both  foreign  and  Amer- 
ican, as  may  aid  the  officers  in  the  discharge  of  their  duties, 
not  exceeding  the  amount  annually  appropriated  by  Con- 
gress for  that  purpose.  [See  Revised  Statutes,  Section 
486.] 

Section  16.  And  be  it  further  enacted,  That  all  officers 
and  employees  of  the  Patent  Office  shall  be  incapable, 
during  the  period  for  which  they  shall  hold  their  appoint- 
ments, to  acquire  or  take,  directly  or  indirectly,  except  by 
inheritance  or  bequest,  any  right  or  interest  in  any  patent 
issued  by  said  office.    [See  Revised  Statutes,  Section  480.] 

Section  17.  And  be  it  further  enacted,  That  for  gross 
misconduct  the  commissioner  may  refuse  to  recognize 
any  person  as  a  patent  agent,  either  generally  or  in  any 
particular  case;  but  the  reasons  for  such  refusal  shall  be 
duly  recorded,  and  be  subject  to  the  approval  of  the  Sec- 
retary of  the  Interior.    [See  Revised  Statutes,  Section  487.] 

Section  18.  And  be  it  further  enacted,  That  the  commis- 
sioner may  require  all  papers  filed  in  the  Patent  Office,  if 
not  correctly,  legibly  and  clearly  written,  to  be  printed  at 
the  cost  of  the  party  filing  them.  [See  Revised  Statutes, 
Section  488.] 

Section  19.  And  be  it  further  enacted,  That  the  commis- 
sioner, subject  to  the  approval  of  the  Secretary  of  the 
Interior,  may  from  time  to  time  establish  rules  and  regula- 
tions, not  inconsistent  with  law,  for  the  conduct  of  pro- 
ceedings in  the  Patent  Office.  [See  Revised  Statutes, 
Section  483.] 

Section  20.  And  be  it  further  enacted,  That  the  commis- 
sioner may  print  or  cause  to  be  printed  copies  of  the  spec- 


THE  PATENT  ACT  OF  1870  915 

ifications  of  all  letters-patent  and  of  the  drawings  of  the 
same,  and  copies  of  the  claims  of  current  issues,  and  copies 
of  such  laws,  decisions,  rules,  regulations,  and  circulars  as 
may  be  necessary  for  the  information  of  the  public.  [See 
Revised  Statutes,  Sections  489,  490,  and  491.] 

Section  21.  And  be  it  further  enacted,  That  all  patents 
shall  be  issued  in  the  name  of  the  United  States  of  America, 
under  the  seal  of  the  Patent  Office,  and  shall  be  signed  by 
the  Secretary  of  the  Interior  and  countersigned  by  the 
commissioner,  and  they  shall  be  recorded,  together  with 
the  specification,  in  said  office,  in  books  to  be  kept  for  that 
purpose.    [See  Revised  Statutes,  Section  4883.] 

Section  22.  And  be  it  further  enacted,  That  every  patent 
shall  contain  a  short  title  or  description  of  the  invention 
or  discovery,  correctly  indicating  its  nature  and  design, 
and  a  grant  to  the  patentee,  his  heirs  or  assigns,  for  the 
term  of  seventeen  years,  of  the  exclusive  right  to  make, 
use,  and  vend  the  said  invention  or  discovery  throughout 
the  United  States  and  the  Territories  thereof,  referring 
to  the  specification  for  the  particulars  thereof;  and  a  copy 
of  said  specifications  and  of  the  drawings  shall  be  annexed 
to  the  patent  and  be  a  part  thereof.  [See  Revised  Stat- 
utes, Section  4884.] 

Section  23.  And  be  it  further  enacted,  That  every  patent 
shall  date  as  of  a  day  not  later  than  six  months  from  the 
time  at  which  it  was  passed  and  allowed,  and  notice  thereof 
was  sent  to  the  applicant  or  his  agent;  and  if  the  final  fee 
shall  not  be  paid  within  that  period,  the  patent  shall  be 
withheld.    [See  Revised  Statutes,  Section  4885.] 

Section  24.  And  be  it  further  enacted,  That  any  person 
who  has  invented  or  discovered  any  new  and  useful  art, 
machine,  manufacture,  or  composition  of  matter,  or  any 
new  and  useful  improvement  thereof,  not  known  or  used 
by  others  in  this  country,  and  not  patented,  or  described 


916  THE    PATENT   STATUTES 

in  any  printed  publication  in  this  or  any  foreign  country, 
before  his  invention  or  discovery  thereof,  and  not  in  public 
use  or  on  sale  for  more  than  two  years  prior  to  his  applica- 
tion, unless  the  same  is  proved  to  have  been  abandoned, 
may,  upon  payment  of  the  duty  required  by  law,  and  other 
due  proceedings  had,  obtain  a  patent  therefor.  [See  Re- 
vised Statutes,  Section  4886.] 

Section  25.  And  be  it  further  enacted,  That  no  person 
shall  be  debarred  from  receiving  a  patent  for  his  invention 
or  discovery,  nor  shall  any  patent  be  declared  invalid,  by 
reason  of  its  having  been  first  patented  or  caused  to  be 
patented  in  a  foreign  country:  Provided,  The  same  shall 
not  have  been  introduced  into  public  use  in  the  United 
Siates  for  more  than  two  years  prior  to  the  application, 
and  that  the  patent  shall  expire  at  the  same  time  with 
the  foreign  patent,  or,  if  there  be  more  than  one,  at  the 
same  time  with  the  one  having  the  shortest  term;  but  in 
no  case  shall  it  be  in  force  more  than  seventeen  years. 
[See  Revised  Statutes,  Section  4887.] 

Section  26.  And  be  it  further  enacted,  That  before  any 
inventor  or  discoverer  shall  receive  a  patent  for  his  inven- 
tion or  discovery,  he  shall  make  application  therefor,  in 
writing,  to  the  commissioner,  and  shall  file  in  the  Patent 
Office  a  written  description  of  the  same,  and  of  the  manner 
and  process  of  making,  constructing,  compounding,  and 
using  it,  in  such  full,  clear,  concise,  and  exact  terms  as  to 
enable  any  person  skilled  in  the  art  or  science  to  which 
it  appertains,  or  with  which  it  is  most  nearly  con- 
nected, to  make,  construct,  compound,  and  use  the 
same;  and  in  case  of  a  machine,  he  shall  explain  the 
principle  thereof,  and  the  best  mode  in  which  he  has 
contemplated  applying  that  principle  so  as  to  distinguish 
it  from  other  inventions;  and  he  shall  particularly  point 
out  and  distinctly  claim  the  part,  improvement,  or  com- 


THE  PATENT  ACT  OF  1870  917 

bination  which  he  claims  as  his  invention  or  discovery; 
and  said  specification  and  claim  shall  be  signed  by  the 
inventor  and  attested  by  two  witnesses.  [See  Revised 
Statutes,  Section  4888.] 

Section  27.  And  be  it  further  enacted,  That  when  the 
nature  of  the  case  admits  of  drawings,  the  applicant  shall 
furnish  one  copy  signed  by  the  inventor  or  his  attorney 
in  fact,  and  attested  by  two  witnesses,  which  shall  be  filed 
in  the  Patent  Office;  and  a  copy  of  said  drawings,  to  be 
furnished  by  the  Patent  Office,  shall  be  attached  to  the 
patent  as  part  of  the  specification.  [See  Revised  Statutes, 
Section  4889.] 

Section  28.  And  be  it  further  enacted,  That  when  the 
invention  or  discovery  is  of  a  composition  of  matter,  the 
applicant,  if  required  by  the  commissioner,  shall  furnish 
specimens  of  ingredients  and  of  the  composition,  sufficient 
in  quantity  for  the  purpose  of  experiment.  [See  Revised 
Statutes,  Section  4890.] 

Section  29.  And  be  it  further  enacted,  That  in  all  cases 
which  admit  of  representation  by  model,  the  applicant, 
if  required  by  the  commissioner,  shall  furnish  one  of 
convenient  size  to  exhibit  advantageously  the  several 
parts  of  his  invention  or  discovery.  [See  Revised  Stat- 
utes, Section  4891.] 

Section  30.  And  be  it  further  enacted,  That  the  appli- 
cant shall  make  oath  or  affirmation  that  he  does  verily 
believe  himself  to  be  the  original  and  first  inventor  or 
discoverer  of  the  art,  machine,  manufacture,  composition, 
or  improvement  for  which  he  solicits  a  patent;  that  he 
does  not  know  and  does  not  believe  that  the  same 
was  ever  before  known  or  used;  and  shall  state  of 
what  country  he  is  a  citizen.  And  said  oath  or  affir- 
mation may  be  made  before  any  person  within  the 
United  States  authorized  by  law  to  administer  oaths, 


918  THE    PATENT    STATUTES 

or,  when  the  applicant  resides  in  a  foreign  country, 
before  any  minister,  charge  d'affaires,  consul,  or  commer- 
cial agent,  holding  commission  under  the  government  of 
the  United  States,  or  before  any  notary  public  of  the  for- 
eign country  in  which  the  applicant  may  be.  [See  Revised 
Statutes,  Section  4892.] 

Section  31.  And  be  it  further  enacted,  That  on  the  filing 
of  any  such  application  and  the  payment  of  the  duty  re- 
quired by  law,  the  commissioner  shall  cause  an  examina- 
tion to  be  made  of  the  alleged  new  invention  or  discovery; 
and  if  on  such  examination  it  shall  appear  that  the  claim- 
ant is  justly  entitled  to  a  patent  under  the  law,  and  that 
the  same  is  sufficiently  useful  and  important,  the  com- 
missioner shall  issue  a  patent  therefor.  [See  Revised 
Statutes,  Section  4893.] 

Section  32.  And  be  it  further  enacted,  That  all  applica- 
tions for  patents  shall  be  completed  and  prepared  for 
examination  within  two  years  after  the  filing  of  the  peti- 
tion, and  in  default  thereof,  or  upon  failure  of  the  applicant 
to  prosecute  the  same  within  two  years  after  any  action 
therein,  of  which  notice  shall  have  been  given  to  the  appli- 
cant, they  shall  be  regarded  as  abandoned  by  the  parties 
thereto,  unless  it  be  shown  to  the  satisfaction  of  the  com- 
missioner that  such  delay  was  unavoidable.  [See  Revised 
Statutes,  Section  4894.] 

Section  33.  And  be  it  further  enacted,  That  patents  may 
be  granted  and  issued  or  reissued  to  the  assignee  of  the 
inventor  or  discoverer,  the  assignment  thereof  being  first 
entered  of  record  in  the  Patent  Office;  but  in  such  case 
the  application  for  the  patent  shall  be  made  and  the  speci- 
fications sworn  to  by  the  inventor  or  discoverer;  and  also, 
if  he  be  living,  in  case  of  an  application  for  reissue.  [See 
Revised  Statutes,  Section  4895.] 

Section  34.  And  be  it  further  enacted,  That  when  any 


THE  PATENT  ACT  OF  1870  919 

person,  having  made  any  new  invention  or  discovery  for 
which  a  patent  might  have  been  granted,  dies  before  a 
patent  is  granted,  the  right  of  applying  for  and  obtaining 
the  patent  shall  devolve  on  his  executor  or  administrator, 
in  trust  for  the  heirs  at  law  of  the  deceased,  in  case  he  shall 
have  died  intestate;  or  if  he  shall  have  left  a  will,  disposing 
of  the  same,  then  in  trust  for  his  devisees,  in  as  full  manner 
and  on  the  same  terms  and  conditions  as  the  same  might 
have  been  claimed  or  enjoyed  by  him  in  his  lifetime;  and 
when  the  application  shall  be  made  by  such  legal  repre- 
sentatives, the  oath  or  affirmation  required  to  be  made 
shall  be  so  varied  in  form  that  it  can  be  made  by  them. 
[See  Revised  Statutes,  Section  4896.] 

Section  35.  And  be  it  further  enacted,  That  any  person 
who  has  an  interest  in  an  invention  or  discovery,  whether 
as  inventor,  discoverer,  or  assignee,  for  which  a  patent  was 
ordered  to  issue  upon  the  payment  of  the  final  fee,  but  who 
has  failed  to  make  payment  thereof  within  six  months 
from  the  time  at  which  it  was  passed  and  allowed,  and 
notice  thereof  was  sent  to  the  applicant  or  his  agent,  shall 
have  a  right  to  make  an  application  for  a  patent  for  such 
invention  or  discovery  the  same  as  in  the  case  of  an  original 
application:  Provided,  That  the  second  application  be 
made  within  two  years  after  the  allowance  of  the  original 
application.  But  no  person  shall  be  held  responsible  in 
damages  for  the  manufacture  or  use  of  any  article  or  thing 
for  which  a  patent,  as  aforesaid,  was  ordered  to  issue,  prior 
to  the  issue  thereof:  And  provided  further,  That  when  an 
application  for  a  patent  has  been  rejected  or  withdrawn, 
prior  to  the  passage  of  this  act,  the  applicant  shall  have  six 
months  from  the  date  of  such  passage  to  renew  his  appli- 
cation, or  to  file  a  new  one ;  and  if  he  omit  to  do  either,  his 
application  shall  be  held  to  have  been  abandoned.  Upon 
the  hearing  of  such  renewed  applications  abandonment 


920  THE    PATENT   STATUTES 

shall  ho  considered  us  a  question  of  fact.  [See  Revised 
Statutes,  Section  4897.] 

Section  36.  A  nd  be  ii  further  enacted,  That  every  patent 
or  any  interest  therein  shall  he  assignable  in  law,  hy  an 
instrument  in  writing;  and  the  patentee  or  his  assigns  or 
legal  representatives  may,  in  like  manner,  grant  and  con- 
vey an  exclusive  right  under  his  patent  to  the  whole  or  any 
specified  part  of  the  United  States;  and  said  assignment, 
grant,  or  conveyance  shall  be  void  as  against  any  subse- 
quent purchaser  or  mortgagee  for  a  valuable  considera- 
tion,  without  notice,  unless  it  is  recorded  in  the  Patent 
Office  within  three  months  from  the  date  thereof.  [See 
Revised  Statutes,  Section  4898.] 

Section  37.  And  be  it  further  enacted,  That  every  person 
who  may  have  purchased  of  the  inventor,  or  with  his 
knowledge  and  consent  may  have  constructed  any  newly 
invented  or  discovered  machine,  or  other  patentable 
article,  prior  to  the  application  by  the  inventor  or  discov- 
erer for  a  patent,  or  sold  or  used  one  so  constructed, 
shall  have  the  right  to  use,  and  vend  to  others  to  be  used, 
the  specific  thing  so  made  or  purchased,  without  liability 
therefor.     [See  Revised  Statutes,  Section  4899.] 

Section  38.  And  be  it  further  enacted,  That  it  shall  be 
the  duty  of  all  patentees,  and  their  assigns  and  legal  rep- 
resentatives, and  of  all  persons  making  or  vending  any 
patented  article  for  or  under  them,  to  give  sufficient 
notice  to  the  public  that  the  same  is  patented,  either  by 
fixing  thereon  the  word  " patented,"  together  with  the 
day  and  year  the  patent  was  granted;  or  when,  from  the 
character  of  the  article,  this  cannot  be  done,  by  fixing  to 
it  or  to  the  package  wherein  one  or  more  of  them  is  en- 
closed, a  label  containing  the  like  notice;  and  in  any  suit 
for  infringement,  by  the  party  failing  so  to  mark,  no 
damages  shall  be  recovered  by  the  plaintiff,  except  on 


THE  PATENT  ACT  OF  1870  921 

proof  that  the  defendant  was  duly  notified  of  the  infringe- 
ment, and  continued,  after  such  notice,  to  make,  use,  or 
vend  the  article  so  patented.  [See  Revised  Statutes, 
Section  4900.] 

Section  39.  And  be  it  further  enacted,  That  if  any  person 
shall,  in  any  manner,  mark  upon  any  thing  made,  used,  or 
sold  by  him  for  which  he  has  not  obtained  a  patent,  the 
name  or  any  imitation  of  the  name  of  any  person  who  has 
obtained  a  patent  therefor,  without  the  consent  of  such 
patentee,  or  his  assigns  or  legal  representatives;  or  shall 
in  any  manner  mark  upon  or  affix  to  any  such  patented 
article  the  word  " patent"  or  "patentee,"  or  the  words 
"letters-patent,"  or  any  word  of  like  import,  with  intent 
t(  >  imitate  or  counterfeit  the  mark  or  device  of  the  patentee, 
without  having  the  license  or  consent  of  such  patentee 
or  his  assigns  or  legal  representatives;  or  shall  in  any 
manner  mark  upon  or  affix  to  any  unpatented  article  the 
word  "patent,"  or  any  word  importing  that  the  same  is 
patented,  for  the  purpose  of  deceiving  the  public,  he 
shall  be  liable  for  every  such  offence  to  a  penalty  of  not 
less  than  one  hundred  dollars,  with  costs;  one  moiety  of 
said  penalty  to  the  person  who  shall  sue  for  the  same,  and 
the  other  to  the  use  of  the  United  States,  to  be  recovered 
by  suit  in  any  district  court  of  the  United  States  within 
whose  jurisdiction  such  offence  may  have  been  committed. 
[See  Revised  Statutes,  Section  4901.] 

Section  40.  And  be  it  further  enacted,  That  any  citizen 
of  the  United  States,  who  shall  have  made  any  new  in- 
vention or  discovery,  and  shall  desire  further  time  to 
mature  the  same,  may,  on  payment  of  the  duty  required 
by  law,  file  in  the  Patent  Office  a  caveat  setting  forth  the 
design  thereof,  and  of  its  distinguishing  characteristics, 
and  praying  protection  of  his  right  until  he  shall  have 
matured  his  invention;  and  such  caveat  shall  be  filed  in 


922  THE    PATENT    STATUTES 

the  confidential  archives  of  the  office  and  preserved  in 
Becrecy,  and  shall  be  operative  for  the  term  of  one  year 
from  the  filing  thereof;  and  if  application  shall  be  made 
within  the  year  by  any  other  person  for  a  patent  with 
which  such  caveat  would  in  any  manner  interfere,  the 
commissioner  shall  deposit  the  description,  specification, 
drawings,  and  model  of  such  application  in  like  manner 
in  the  confidential  archives  of  the  office,  and  give  notice 
thereof,  by  mail,  to  the  person  filing  the  caveat,  who,  if 
he  would  avail  himself  of  his  caveat,  shall  file  his  descrip- 
tion, specification,  drawings,  and  model  within  three 
months  from  the  time  of  placing  said  notice  in  the  post- 
office  in  Washington,  with  the  usual  time  required  for 
transmitting  it  to  the  caveator  added  thereto,  which  time 
shall  be  indorsed  on  the  notice.  And  an  alien  shall  have 
the  privilege  herein  granted,  if  he  shall  have  resided  in 
the  United  States  one  year  next  preceding  the  filing  of 
his  caveat,  and  made  oath  of  his  intention  to  become  a 
citizen.    [See  Revised  Statutes,  Section  4902.] 

Section  41.  And  be  it  further  enacted,  That  whenever, 
on  examination,  any  claim  for  a  patent  is  rejected  for  any 
reason  whatever,  the  commissioner  shall  notify  the  appli- 
cant thereof,  giving  him  briefly  the  reasons  for  such  re- 
jection, together  with  such  information  and  references 
as  may  be  useful  in  judging  of  the  propriety  of  renewing 
his  application  or  of  altering  his  specification;  and  if, 
after  receiving  such  notice,  the  applicant  shall  persist 
in  his  claim  for  a  patent,  with  or  without  altering  his  specifi- 
cations, the  commissioner  shall  order  a  re-examination 
of  the  case.    [See  Revised  Statutes,  Section  4903.] 

Section  42.  And  be  it  further  enacted,  That  whenever  an 
application  is  made  for  a  patent  which,  in  the  opinion  of 
the  commissioner,  would  interfere  with  any  pending  ap- 
plication, or  with  any  unexpired  patent,  he  shall  give 


THE  PATENT  ACT  OF  1870  923 

notice  thereof  to  the  applicants,  or  applicant  and  patentee, 
as  the  case  may  be,  and  shall  direct  the  primary  examiner 
to  proceed  to  determine  the  question  of  priority  of  inven- 
tion. And  the  commissioner  may  issue  a  patent  to  the 
party  who  shall  be  adjudged  the  prior  inventor,  unless 
the  adverse  party  shall  appeal  from  the  decision  of  the 
primary  examiner,  or  of  the  board  of  examiners-in-chief, 
as  the  case  may  be,  within  such  time,  not  less  than  twenty 
days,  as  the  commissioner  shall  prescribe.  [See  Revised 
Statutes,  Section  4904.] 

Section  43.  And  be  it  further  enacted,  That  the  commis- 
sioner may  establish  rules  for  taking  affidavits  and  depo- 
sitions required  in  cases  pending  in  the  Patent  Office, 
and  such  affidavits  and  depositions  may  be  taken  before 
any  officer  authorized  by  law  to  take  depositions  to  be 
used  in  the  courts  of  the  United  States,  or  of  the  State 
where  the  officer  resides.  [See  Revised  Statutes,  Section 
4905.] 

Section  44.  And  be  it  further  enacted,  That  the  clerk  of 
any  court  of  the  United  States,  for  any  district  or  territory 
wherein  testimony  is  to  be  taken  for  use  in  any  contested 
case  pending  in  the  Patent  Office,  shall,  upon  the  appli- 
cation of  any  party  thereto,  or  his  agent  or  attorney,  issue 
[a]  subpoena  for  any  witness  residing  or  being  within  said 
district  or  territory,  commanding  him  to  appear  and  tes- 
tify before  any  officer  in  said  district  or  territory  author- 
ized to  take  depositions  and  affidavits,  at  any  time  and 
place  in  the  subpoena  stated;  and  if  any  witness,  after 
being  duly  served  with  such  subpoena,  shall  neglect  or 
refuse  to  appear,  or  after  appearing  shall  refuse  to  testify, 
the  judge  of  the  court  whose  clerk  issued  the  subpoena, 
may,  on  proof  of  such  neglect  or  refusal,  enforce  obedience 
to  the  process,  or  punish  the  disobedience  as  in  other  like 
cases.    [See  Revised  Statutes,  Sections  4906  and  4908.] 


*>'_M  THE    PATENT   STATUTES 

Section  45.  And  be  it  further  enacted,  That  every  wit- 
ness duly  subpcenaed  and  in  attendance  shall  be  allowed 
the  same  fees  as  are  allowed  to  witnesses  attending  the 
courts  of  the  United  States,  but  no  witness  shall  be  re- 
quired to  attend  at  any  place  more  than  forty  miles  from 
the  place  where  the  subpoena  is  served  upon  him,  nor  be 
deemed  guilty  of  contempt  for  disobeying  such  subpoena, 
unless  his  fees  and  travelling  expenses  in  going  to,  return- 
ing from,  and  one  day's  attendance  at  the  place  of  exami- 
nation, are  paid  or  tendered  him  at  the  time  of  the  service 
of  the  subpoena;  nor  for  refusing  to  disclose  any  secret 
invention  or  discovery  made  or  owned  by  himself.  [See 
Revised  Statutes,  Sections  4906,  4907,  and  4908.] 

Section  46.  And  be  it  further  enacted,  That  every  appli- 
cant for  a  patent  or  the  reissue  of  a  patent,  any  of  the 
claims  of  which  have  been  twice  rejected,  and  every  party 
to  an  interference,  may  appeal  from  the  decision  of  the 
primary  examiner,  or  of  the  examiner  in  charge  of  inter- 
ference[s],  in  such  case  to  the  board  of  examiners-in-chief, 
having  once  paid  the  fee  for  such  appeal  provided  by  law. 
[See  Revised  Statutes,  Section  4909.] 

Section  47.  And  be  it  further  enacted,  That  if  such 
party  is  dissatisfied  with  the  decision  of  the  examiners- 
in-chief,  he  may,  on  payment  of  the  duty  required  by  law, 
appeal  to  the  commissioner  in  person.  [See  Revised 
Statutes,  Section  4910.] 

Section  48.  And  be  it  further  enacted,  That  if  such  party, 
except  a  party  to  an  interference,  is  dissatisfied  with  the 
decision  of  the  commissioner,  he  may  appeal  to  the  Su- 
preme Court  of  the  District  of  Columbia,  sitting  in  banc. 
[See  Revised  Statutes,  Section  4911.] 

Section  49.  And  be  it  further  enacted,  That  when  an 
appeal  is  taken  to  the  Supreme  Court  of  the  District  of 
Columbia,  the  appellant  shall  give  notice  thereof  to  the 


THE  PATENT  ACT  OF  1870  925 

commissioner,  and  file  in  the  Patent  Office,  within  such 
time  as  the  commissioner  shall  appoint,  his  reasons  of 
appeal,  specifically  set  forth  in  writing.  [See  Revised 
Statutes,  Section  4912.] 

Section  50.  And  be  it  further  enacted,  That  it  shall  be  the 
duty  of  said  court,  on  petition,  to  hear  and  determine  such 
appeal,  and  to  revise  the  decision  appealed  from  in  a  sum- 
mary way,  on  the  evidence  produced  before  the  com- 
missioner, at  such  early  and  convenient  time  as  the  court 
may  appoint,  notifying  the  commissioner  of  the  time  and 
place  of  hearing;  and  the  revision  shall  be  confined  to  the 
points  set  forth  in  the  reasons  of  appeal.  And  after  hear- 
ing the  case,  the  court  shall  return  to  the  commissioner  a 
certificate  of  its  proceedings  and  decision,  which  shall  be 
entered  of  record  in  the  Patent  Office,  and  govern  the 
further  proceedings  in  the  case.  But  no  opinion  or  de- 
cision of  the  court  in  any  such  case  shall  preclude  any  per- 
son interested  from  the  right  to  contest  the  validity  of 
such  patent  in  any  court  wherein  the  same  may  be  called 
in  question.    [See  Revised  Statutes,  Section  4914.] 

Section  51.  And  be  it  further  enacted,  That  on  receiving 
notice  of  the  time  and  place  of  hearing  such  appeal,  the 
commissioner  shall  notify  all  parties  who  appear  to  be 
interested  therein  in  such  manner  as  the  court  may  pre- 
scribe. The  party  appealing  shall  lay  before  the  court 
certified  copies  of  all  the  original  papers  and  evidence  in 
the  case,  and  the  commissioner  shall  furnish  it  with  the 
grounds  of  his  decision,  fully  set  forth  in  writing,  touching- 
all  the  points  involved  by  the  reasons  of  appeal.  And  at 
the  request  of  any  party  interested,  or  of  the  court,  the 
commissioner  and  the  examiners  may  be  examined  under 
oath,  in  explanation  of  the  principles  of  the  machine  or 
other  thing  for  which  a  patent  is  demanded.  [See  Revised 
Statutes,  Section  4913.1 


926  THE    PATENT    STATUTES 

Section  52.  And  be  it  further  enacted,  That  whenever  a 
pal  cut  on  application  is  refused,  for  any  reason  whatever, 
either  by  the  commissioner  or  by  the  Supreme  Court  of 
the  District  of  Columbia  upon  appeal  from  the  com- 
missioner, the  applicant  may  have  remedy  by  bill  in  equity; 
and  the  court  having  cognizance  thereof,  on  notice  to 
adverse  parties  and  other  due  proceedings  had,  may  ad- 
judge that  such  applicant  is  entitled,  according  to  law,  to 
receive  a  patent  for  his  invention,  as  specified  in  his  claim, 
or  for  any  part  thereof,  as  the  facts  in  the  case  may  appear. 
And  such  adjudication,  if  it  be  in  favor  of  the  right  of  the 
applicant,  shall  authorize  the  commissioner  to  issue  such 
patent,  on  the  applicant  filing  in  the  Patent  Office  a  copy 
of  the  adjudication,  and  otherwise  complying  with  the 
requisitions  of  law.  And  in  all  cases  where  there  is  no 
opposing  party  a  copy  of  the  bill  shall  be  served  on  the 
commissioner,  and  all  the  expenses  of  the  proceeding 
shall  be  paid  by  the  applicant,  whether  the  final  de- 
cision is  in  his  favor  or  not.  [See  Revised  Statutes, 
Section  4915.] 

Section  53.  And  be  it  further  enacted,  That  whenever 
any  patent  is  inoperative  or  invalid,  by  reason  of  a  defec- 
tive or  insufficient  specification,  or  by  reason  of  the  pat- 
entee claiming  as  his  own  invention  or  discovery  more 
than  he  had  a  right  to  claim  as  new,  if  the  error  has  arisen 
by  inadvertence,  accident,  or  mistake,  and  without  any 
fraudulent  or  deceptive  intention,  the  commissioner  shall, 
on  the  surrender  of  such  a  patent  and  the  payment  of  the 
duty  required  by  law,  cause  a  new  patent  for  the  same 
invention,  and  in  accordance  with  the  corrected  specifica- 
tion, to  be  issued  to  the  patentee,  or,  in  the  case  of  his 
death  or  assignment  of  the  whole  or  any  undivided  part 
of  the  original  patent,  to  his  executors,  administrators,  or 
assigns,  for  the  unexpired  part  of  the  term  of  the  original 


THE  PATENT  ACT  OF  1870  927 

patent,  the  surrender  of  which  shall  take  effect  upon  the 
issue  of  the  amended  patent;  and  the  commissioner  may, 
in  his  discretion,  cause  several  patents  to  be  issued  for 
distinct  and  separate  parts  of  the  thing  patented,  upon 
demand  of  the  applicant,  and  upon  payment  of  the  re- 
quired fee  for  a  reissue  for  each  of  such  reissued  letters- 
patent.  And  the  specifications  and  claim  in  every  such 
case  shall  be  subject  to  revision  and  restriction  in  the  same 
manner  as  original  applications  are.  And  the  patent  so 
reissued,  together  with  the  corrected  specification,  shall 
have  the  effect  and  operation  in  law,  on  the  trial  of  all 
actions  for  causes  thereafter  arising,  as  though  the  same 
had  been  originally  filed  in  such  corrected  form;  but  no 
new  matter  shall  be  introduced  into  the  specification,  nor 
in  case  of  a  machine  patent  shall  the  model  or  drawings 
be  amended,  except  each  by  the  other;  but  when  there  is 
neither  model  nor  drawing,  amendments  may  be  made 
upon  proof  satisfactory  to  the  commissioner  that  such  new 
matter  or  amendment  was  a  part  of  the  original  invention, 
and  was  omitted  from  the  specification  by  inadvertence, 
accident,  or  mistake,  as  aforesaid.  [See  Revised  Stat- 
utes, Section  4916.] 

Section  54.  And  be  it  further  enacted,  That  whenever, 
through  inadvertence,  accident,  or  mistake,  and  without 
any  fraudulent  or  deceptive  intention,  a  patentee  has 
claimed  more  than  that  of  which  he  was  the  original  or 
first  inventor  or  discoverer,  his  patent  shall  be  valid  for 
all  that  part  which  is  truly  and  justly  his  own,  provided 
the  same  is  a  material  or  substantial  part  of  the  thing 
patented;  and  any  such  patentee,  his  heirs  or  assigns, 
whether  of  the  whole  or  any  sectional  interest  therein, 
may,  on  payment  of  the  duty  required  by  law,  make  dis- 
claimer of  such  parts  of  the  thing  patented  as  he  shall 
not  choose  to  claim  or  to  hold  by  virtue  of  the  patent  or 


928  THE    PATEN  r   BTAT1    I'KS 

assignment,  Btating  therein  the  extent  of  his  interest  in 
such  patent;  said  disclaimer  shall  be  id  writing,  attested 
by  one  or  more  witnesses,  and  recorded  in  the  Patent 
Office,  and  it  shall  thereafter  be  considered  as  part  of  the 
original  specification  to  the  extent  of  the  interest  possessed 
by  the  claimant  and  by  those  claiming  under  him  after 
the  record  thereof.  But  no  such  disclaimer  shall  affect 
any  action  pending  at  the  time  of  its  being  filed,  except 
so  far  as  may  relate  to  the  question  of  unreasonable  neg- 
lect or  delay  in  filing  it.  [See  Revised  Statutes,  Section 
4917.] 

Section  55.  And  be  it  further  enacted,  That  all  actions, 
suits,  controversies,  and  cases  arising  under  the  patent 
laws  of  the  United  States  shall  be  originally  cognizable, 
as  well  in  equity  as  at  law,  by  the  circuit  courts  of  the 
United  States,  or  any  district  court  having  the  powers 
and  jurisdiction  of  a  circuit  court,  or  by  the  Supreme  Court 
of  the  District  of  Columbia,  or  of  any  territory;  and  the 
court  shall  have  power,  upon  bill  in  equity  filed  by  any 
party  aggrieved,  to  grant  injunctions  according  to  the 
course  and  principles  of  courts  of  equity,  to  prevent  the 
violation  of  any  right  secured  by  patent,  on  such  terms  as 
the  court  may  deem  reasonable;  and  upon  a  decree  being 
rendered  in  any  such  case  for  an  infringement,  the  claimant 
[complainant]  shall  be  entitled  to  recover,  in  addition  to 
the  profits  to  be  accounted  for  by  the  defendant,  the 
damages  the  complainant  has  sustained  thereby,  and  the 
court  shall  assess  the  same  or  cause  the  same  to  be  assessed 
under  its  direction,  and  the  court  shall  have  the  same 
powers  to  increase  the  same  in  its  discretion  that  are  given 
by  this  act  to  increase  the  damages  found  by  verdicts  in 
actions  upon  the  case;  but  all  actions  shall  be  brought 
during  the  term  for  which  the  letters-patent  shall  be 
granted  or  extended,  or  within  six  years  after  the  expira- 


THE  PATENT  ACT  OF  1870  929 

tion  thereof.  [See  Revised  Statutes,  Section  629,  %  9,  and 
Section  4921.] 

Section  56.  And  be  it  further  enacted,  That  a  writ  of 
error  or  appeal  to  the  Supreme  Court  of  the  United  States 
shall  lie  from  all  judgments  and  decrees  of  any  circuit 
court,  or  of  any  district  court  exercising  the  jurisdiction 
of  a  circuit  court,  or  of  the  Supreme  Court  of  the  District 
of  Columbia,  or  of  any  Territory,  in  any  action,  suit, 
controversy,  or  case,  at  law  or  in  equity,  touching  patent 
rights,  in  the  same  manner  and  under  the  same  circum- 
stances as  in  other  judgments  and  decrees  of  such  circuit 
courts,  without  regard  to  the  sum  or  value  in  controversy. 
[See  Revised  Statutes,  Section  699.] 

Section  57.  And  be  it  further  enacted,  That  written  or 
printed  copies  of  any  records,  books,  papers,  or  drawings 
belonging  to  the  Patent  Office,  and  of  letters-patent  under 
the  signature  of  the  commissioner  or  acting  commissioner, 
with  the  seal  of  office  affixed,  shall  be  competent  evidence 
in  all  cases  wherein  the  originals  could  be  evidence,  and 
any  person  making  application  therefor,  and  paying  the 
fee  required  by  law,  shall  have  certified  copies  thereof. 
And  copies  of  the  specifications  and  drawings  of  foreign 
letters-patent,  certified  in  like  manner,  shall  be  prima 
facie  evidence  of  the  fact  of  the  granting  of  such  foreign 
letters-patent,  and  of  the  date  and  contents  thereof.  [See 
Revised  Statutes,  Sections  892  and  893.] 

Section  58.  And  be  it  further  enacted,  That  whenever 
there  shall  be  interfering  patents,  any  person  interested  in 
any  one  of  such  interfering  patents,  or  in  the  working  of 
the  invention  claimed  under  either  of  such  patents,  may 
have  relief  against  the  interfering  patentee,  and  all  parties 
interested  under  him,  by  suit  in  equity  against  the  owners 
of  the  interfering  patent;  and  the  court  having  cognizance 
thereof,  as  hereinbefore  provided,  on  notice  to  adverse 


g  t()  THE    PATENT   STATUTES 

parties,  and  other  due  proceedings  had  according  to  the 
course  of  equity,  may  adjudge  and  declare  either  of  the 
patents  void  in  whole  or  in  part,  or  inoperative,  or  invalid 
in  any  particular  pari  of  the  United  States,  according  to 
the  interest  of  the  parties  in  the  patent  or  the  invention 
patented.  But  no  such  judgment  or  adjudication  shall 
affect  the  rights  of  any  person  except  the  parties  to  the 
suit  and  those  deriving  title  under  them  subsequent  to 
the  rendition  of  such  judgment.  [See  Revised  Statutes, 
Section  4918.] 

Section  59.  And  be  it  further  enacted,  That  damages  for 
the  infringement  of  any  patent  may  be  recovered  by  action 
on  the  case  in  any  circuit  court  of  the  United  States,  or 
district  court  exercising  the  jurisdiction  of  a  circuit  court, 
or  in  the  Supreme  Court  of  the  District  of  Columbia,  or 
of  any  Territory,  in  the  name  of  the  party  interested, 
either  as  patentee,  assignee,  or  grantee.  And  whenever 
in  any  such  action  a  verdict  shall  be  rendered  for  the  plain- 
tiff, the  court  may  enter  judgment  thereon  for  any  sum 
above  the  amount  found  by  the  verdict  as  the  actual  dam- 
ages sustained,  according  to  the  circumstances  of  the  case, 
not  exceeding  three  times  the  amount  of  such  verdict, 
together  with  the  costs.  [See  Revised  Statutes,  Section 
629,  It  9,  and  Section  4919.] 

Section  60.  And  be  it  further  enacted,  That  whenever, 
through  inadvertence,  accident,  or  mistake,  and  without 
any  wil[l]ful  default  or  intent  to  defraud  or  mislead  the 
public,  a  patentee  shall  have  (in  his  specification)  claimed 
to  be  the  original  and  first  inventor  or  discoverer  of  any 
material  or  substantial  part  of  the  thing  patented,  of 
which  he  was  not  the  original  and  first  inventor  or  dis- 
coverer as  aforesaid,  every  such  patentee,  his  executors, 
administrators,  and  assigns,  whether  of  the  whole  or  any 
sectional  interest  in  the  patent,  may  maintain  a  suit  at 


THE  PATENT  ACT  OF  1870  931 

law  or  in  equity,  for  the  infringement  of  any  part  thereof, 
which  was  bona  fide  his  own,  provided  it  shall  be  a  mate- 
rial and  substantial  part  of  the  thing  patented,  and  be 
definitely  distinguishable  from  the  parts  so  claimed,  with- 
out right  as  aforesaid,  notwithstanding  the  specifications 
may  embrace  more  than  that  of  which  the  patentee  was 
the  original  or  first  inventor  or  discoverer.  But  in  every 
such  case  in  which  a  judgment  or  decree  shall  be  rendered 
for  the  plaintiff,  no  costs  shall  be  recovered  unless  the 
proper  disclaimer  has  been  entered  at  the  Patent  Office 
before  the  commencement  of  the  suit;  nor  shall  he  be 
entitled  to  the  benefits  of  this  section  if  he  shall  have  un- 
reasonably neglected  or  delayed  to  enter  said  disclaimer. 
[See  Revised  Statutes,  Section  4922.] 

Section  61.  And  be  it  further  enacted,  That  in  any  action 
for  infringement  the  defendant  may  plead  the  general 
issue,  and  having  given  notice  in  writing  to  the  plaintiff 
or  his  attorney,  thirty  days  before,  may  prove  on  trial 
any  one  or  more  of  the  following  special  matters: — 

Fust.  That  for  the  purpose  of  deceiving  the  public  the 
description  and  specification  filed  by  the  patentee  in  the 
Patent  Office  was  made  to  contain  less  than  the  whole 
truth  relative  to  his  invention  or  discovery,  or  more  than 
is  necessary  to  produce  the  desired  effect;  or, 

Second.  That  he  had  surreptitiously  or  unjustly  ob- 
tained the  patent  for  that  which  was  in  fact  invented  by 
another,  who  was  using  reasonable  diligence  in  adapting 
and  perfecting  the  same;  or, 

Third.  That  it  had  been  patented  or  described  in  some 
printed  publication  prior  to  his  supposed  invention  or 
discovery  thereof;  or, 

Fourth.  That  he  was  not  the  original  and  first  inventor 
or  discoverer  of  any  material  and  substantial  part  of  the 
thing  patented;  or, 


932  I'll  I.    PATENT   STATUTES 

Fifth.  Thai  it  had  been  in  public  use  or  on  sale  in  this 
country,  for  more  than  two  years  before  his  application  for 

a  patent,  or  had  been  abandoned  to  the  public. 

And  in  notices  as  to  proof  of  previous  invention,  knowl- 
edge, or  use  of  the  thing  patented,  the  defendant  shall 
st  ate  the  names  of  patentees  and  the  dates  of  their  patents, 
and  when  granted,  and  the  names  and  residences  of  the 
persons  alleged  to  have  invented,  or  to  have  had  the  prior 
knowledge  of  the  thing  patented,  and  where  and  by  whom 
it  had  been  used;  and  if  any  one  or  more  of  the  special 
matters  alleged  shall  be  found  for  the  defendant,  judg- 
ment shall  be  rendered  for  him  with  costs.  And  the  like 
defences  may  be  pleaded  in  any  suit  in  equity  for  relief 
against  an  alleged  infringement;  and  proofs  of  the  same 
may  be  given  upon  like  notice  in  the  answer  of  the  de- 
fendant, and  with  the  like  effect.  [See  Revised  Statutes, 
Section  4920.] 

Section  62.  And  be  it  further  enacted,  That  whenever 
it  shall  appear  that  the  patentee,  at  the  time  of  making 
his  application  for  the  patent,  believed  himself  to  be  the 
original  and  first  inventor  or  discoverer  of  the  thing  pat- 
ented, the  same  shall  not  be  held  to  be  void  on  account  of 
the  invention  or  discovery,  or  any  part  thereof,  having 
been  known  or  used  in  a  foreign  country,  before  his  inven- 
tion or  discovery  thereof,  if  it  had  not  been  patented  or 
described  in  a  printed  publication.  [See  Revised  Statutes, 
Section  4923.] 

Section  63.  And  be  it  further  enacted,  That  where  the 
patentee  of  any  invention  or  discovery,  the  patent  for 
which  was  granted  prior  to  the  second  day  of  March, 
eighteen  hundred  and  sixty-one,  shall  desire  an  extension 
of  his  patent  beyond  the  original  term  of  its  limitation, 
he  shall  make  application  therefor,  in  writing,  to  the  com- 
missioner, setting  forth  the  reasons  why  such  extension 


THE  PATENT  ACT  OF  1870  933 

should  be  grunted;  and  he  shall  also  furnish  a  written 
statement  under  oath  of  the  ascertained  value  of  the  in- 
vention or  discovery,  and  of  his  receipts  and  expenditures 
on  account  thereof,  sufficiently  in  detail  to  exhibit  a  true 
and  faithful  account  of  the  loss  and  profit  in  any  manner 
accruing  to  him  by  reason  of  said  invention  or  discovery. 
And  said  application  shall  be  filed  not  more  than  six 
months  nor  less  than  ninety  days  before  the  expiration  of 
the  original  term  of  the  patent;  and  no  extension  shall  be 
granted  after  the  expiration  of  said  original  term.  [See 
Revised  Statutes,  Section  4924.] 

Section  64.  And  be  it  further  enacted,  That  upon  the 
receipt  of  such  application,  and  the  payment  of  the  duty 
required  by  law,  the  commissioner  shall  cause  to  be  pub- 
lished in  one  newspaper  in  the  city  of  Washington,  and 
in  such  other  papers  published  in  the  section  of  the  coun- 
try most  interested  adversely  to  the  extension  of  the  pat- 
ent as  he  may  deem  proper,  for  at  least  sixty  days  prior 
to  the  day  set  for  hearing  the  case,  a  notice  of  such  appli- 
cation, and  of  the  time  and  place  when  and  where  the 
same  will  be  considered,  that  any  person  may  appear  and 
show  cause  why  the  extension  should  not  be  granted. 
[See  Revised  Statutes,  Section  4925.] 

Section  65.  And  be  it  further  enacted,  That  on  the  pub- 
lication of  such  notice,  the  commissioner  shall  refer  the 
case  to  the  principal  examiner  having  charge  of  the  class 
of  inventions  to  which  it  belongs,  who  shall  make  to  said 
commissioner  a  full  report  of  the  case,  and  particularly 
whether  the  invention  or  discovery  was  new  and  patent- 
able when  the  original  patent  was  granted.  [See  Revised 
Statutes,  Section  4926.]  4 

Section  66.  And  be  it  further  enacted,  That  the  commis- 
sioner shall,  at  the  time  and  place  designated  in  the  pub- 
lished notice,  hear  and  decide  upon  the  evidence  pro- 


93  1  THE    PATENT   STATUTES 

duced,  both  for  and  againsl  the  extension;  and  if  it  shall 
appear  to  his  satisfaction  thai  the  patentee,  withoul 
neglecl  or  fanll  on  his  part,  has  failed  to  obtain  from  the 
use  and  sale  of  his  invention  or  discovery,  a  reasonable 
remuneration  for  the  time,  ingenuity,  and  expense  be- 
stowed  upon  it,  and  the  introduction  of  it  into  use,  and 
thai  it  is  just  and  proper,  having  due  regard  to  the  public 
interest,  that  the  term  of  the  patent  should  be  extended, 
the  said  commissioner  shall  make  a  certificate  thereon, 
renewing  and  extending  the  said  patent  for  the  term  of 
seven  years  from  the  expiration  of  the  first  term,  which 
certificate  shall  be  recorded  in  the  Patent  Office,  and 
thereupon  the  said  patent  shall  have  the  same  ef- 
fect in  law  as  though  it  had  been  originally  granted 
for  twenty-one  years.  [See  Revised  Statutes,  Section 
4927.] 

Section  67.  And  be  it  further  enacted,  That  the  benefit 
of  the  extension  of  a  patent  shall  extend  to  the  assignees 
and  grantees  of  the  right  to  use  the  thing  patented  to 
the  extent  of  their  interest  therein.  [See  Revised  Statutes, 
Section  4928.] 

Section  68.  And  be  it  further  enacted,  That  the  fol- 
lowing shall  be  the  rates  for  patent  fees : — 

On  filing  each  original  application  for  a  patent,  fifteen 
dollars. 

On  issuing  each  original  patent,  twenty  dollars. 

On  filing  each  caveat,  ten  dollars. 

On  every  application  for  the  reissue  of  a  patent,  thirty 
dollars. 

On  filing  each  disclaimer,  ten  dollars. 

On  every  application  for  the  extension  of  a  patent, 
fifty  dollars. 

On  the  granting  of  every  extension  of  a  patent,  fifty 
dollars. 


THE    PATENT    A.CT    OF    I S70  (X\~> 

On  an  appeal  for  the  first  time  from  the  primary  ex- 
aminers to  the  examiners-in-chief,  ten  dollars. 

On  every  appeal  from  the  examiners-in-chief  to  the  com- 
missioner, twenty  dollars. 

For  certified  copies  of  patents  and  other  papers,  ten 
cents  per  hundred  words. 

For  recording  every  assignment,  agreement,  power  of 
attorney,  or  other  paper,  of  three  hundred  words  or  under, 
one  dollar;  of  over  three  hundred  and  under  one  thousand 
words,  two  dollars;  of  over  one  thousand  words,  three 
dollars. 

For  copies  of  drawings,  the  reasonable  cost  of  making 
them.    [See  Revised  Statutes,  Section  4934.] 

Section  69.  And  be  it  further  enacted.  That  patent  fees 
may  be  paid  to  the  commissioner,  or  to  the  treasurer  or 
any  of  the  assistant  treasurers  of  the  United  States,  or  to 
any  of  the  designated  depositaries,  national  banks,  or 
receivers  of  public  money,  designated  by  the  Secretary 
of  the  Treasury  for  that,  purpose,  who  shall  give  the  de- 
positor a  receipt  or  certificate  of  deposit  therefor.  And 
all  money  received  at  the  Patent  Office,  for  any  purpose, 
or  from  any  source  whatever,  shall  be  paid  into  the 
treasury  as  received,  without  any  deduction  whatever; 
and  all  disbursements  for  said  office  shall  be  made  by  the 
disbursing  clerk  of  the  Interior  Department.  [See  Re- 
vised Statutes,  Sections  496  and  4935.] 

Section  70.  And  be  it  further  enacted,  That  the  Treas- 
urer of  the  United  States  is  authorized  to  pay  back  any 
sum  or  sums  of  money  to  any  person  who  shall  have  paid 
the  same  into  the  treasury,  or  to  any  receiver  or  deposi- 
tary, to  the  credit  of  the  treasurer,  as  for  fees  accruing 
at  the  Patent  Office  through  mistake,  certificate  thereof 
being  made  to  said  treasurer  by  the  Commissioner  of 
Patents.    [See  Revised  Statutes,  Section  4936.] 


936  THE    PATENT   STATUTES 

Section  71.  And  be  it  further  enacted,  That  any  person 
who,  by  his  own  industry,  genius,  efforts,  and  expense, 
has  invented  or  produced  any  new  and  original  design  for 
a  manufacture,  bust,  statue,  alto-relievo,  or  bas-relief; 
any  new  and  original  design  for  the  printing  of  wool[l]en, 
silk,  cotton,  or  other  fabrics;  any  new  and  original  im- 
pression, ornament,  pattern,  print,  or  picture,  to  be 
printed,  painted,  cast,  or  otherwise  placed  on  or  worked 
into  any  article  of  manufacture;  or  any  new,  useful, 
and  original  shape  or  configuration  of  any  article  of  manu- 
facture, the  same  not  having  been  known  or  used  by  others 
before  his  invention  or  production  thereof,  or  patented 
or  described  in  any  printed  publication,  may,  upon  pay- 
ment of  the  duty  required  by  law,  and  other  due  proceed- 
ings had  the  same  as  in  cases  of  inventions  or  discoveries, 
obtain  a  patent  therefor.  [See  Revised  Statutes,  Sec- 
tion 4929.] 

Section  72.  And  be  it  further  enacted,  That  the  com- 
missioner may  dispense  with  models  of  designs  when  the 
design  can  be  sufficiently  represented  by  drawings  or 
photographs.    [See  Revised  Statutes,  Section  4930.] 

Section  73.  And  be  it  further  enacted,  That  patents  for 
designs  may  be  granted  for  the  term  of  three  years  and 
six  months,  or  for  seven  years,  or  for  fourteen  years,  as 
the  applicant  may,  in  his  application,  elect.  [See  Revised 
Statutes,  Section  4931.] 

Section  74.  And  be  it  further  enacted,  That  patentees  of 
designs  issued  prior  to  March  two,  eighteen  hundred  and 
sixty-one,  shall  be  entitled  to  extension  of  their  respective 
patents  for  the  term  of  seven  years,  in  the  same  manner 
and  under  the  same  restrictions  as  are  provided  for  the 
extension  of  patents  for  inventions  or  discoveries  issued 
prior  to  the  second  day  of  March,  eighteen  hundred  and 
sixty-one.     [See  Revised  Statutes,  Section  4932.] 


THE    PATENT    A.CT   OF    L870  037 

Section  75.  And  be  it  further  enacted,  That  the  follow- 
ing shall  be  the  rates  of  fees  in  design  cases:— 

For  three  years  and  six  months,  ten  dollars. 

For  seven  years,  fifteen  dollars. 

For  fourteen  years,  thirty  dollars. 

For  all  other  cases  in  which  fees  are  required,  the  same 
rates  as  in  cases  of  inventions  or  discoveries.  [See  Revised 
Statutes,  Section  4934.] 

Section  76.  And  be  it  further  enacted,  That  all  the  regu- 
lations and  provisions  which  apply  to  the  obtaining  or 
protection  of  patents  for  inventions  or  discoveries,  not 
inconsistent  with  the  provisions  of  this  act,  shall  apply 
to  patents  for  designs.  [See  Revised  Statutes,  Section 
4933.] 

[Sections  77  to  110,  inclusive,  refer  to  trade-marks  and 
copyrights,  and  not  to  patents.] 

Section  111.  And  be  it  further  enacted,  That  the  acts 
and  parts  of  acts  set  forth  in  the  schedule  of  acts  cited, 
hereto  annexed,  are  hereby  repealed,  without  reviving 
any  acts  or  parts  of  acts  repealed  by  any  of  said  acts, 
or  by  any  clause  or  provisions  therein:  Provided,  however, 
That  the  repeal  hereby  enacted  shall  not  affect,  impair, 
or  take  away  any  right  existing  under  any  of  said  laws; 
but  all  actions  and  causes  of  action,  both  in  law  or  in 
equity,  which  have  arisen  under  any  of  said  laws,  may  be 
commenced  and  prosecuted,  and  if  already  commenced 
may  be  prosecuted  to  final  judgment  and  execution,  in 
the  same  manner  as  though  this  act  had  not  been  passed, 
excepting  that  the  remedial  provisions  of  this  act  shall  be 
applicable  to  all  suits  and  proceedings  hereafter  com- 
menced: And  provided  also,  That  all  applications  for  pat- 
ents pending  at  the  time  of  the  passage  of  this  act,  in  cases 
where  the  duty  has  been  paid,  shall  be  proceeded  with  and 
acted  on  in  the  same  manner  as  though  filed  after  the 


938  THE    PATENT   BTATUTE3 

passage  thereof:  -1//'/  provided  further,  That  all  offences 
which  are  defined  and  punishable  under  any  of  said  acts, 
and  all  penalties  and  forfeitures  created  thereby  and  in- 
curred before  this  act  takes  effect,  may  be  prosecuted, 
sued  for,  and  recovered,  and  such  offences  punished  ac- 
cording to  the  provision  of  said  acts,  which  are  continued 
in  force  for  such  purpose. 

Approved  July  8,  1870. 

Repealed  June  22,  1874.  Revised  Statutes,  Title 
LXXIV. 

PATENT   ACT  OF   MARCH   3,    1871 

16  Statutes  at  Large,  583 

An  Act  to  amend  an  Act  to  revise,  consolidate,  and 
amend  the  Statutes  relating  to  Patents  and  Copy- 
rights 

Be  it  enacted  by  the  Senate  and  House  of  Repre- 
sentatives of  the  United  States  of  America  in  Congress  as- 
sembled, That  that  part  of  section  thirty-three  of  an  act 
entitled  "An  act  to  revise,  consolidate,  and  amend  the 
statutes  relating  to  patents  and  copyrights,"  approved 
July  eighth,  eighteen  hundred  and  seventy,  which  re- 
quires that,  in  case  of  application  by  assignee  or  assignees 
for  reissue  of  letters-patent,  the  application  shall  be  made 
and  the  specification  sworn  to  by  the  inventor  or  dis- 
coverer, if  living,  shall  not  be  construed  to  apply  to  pat- 
ents issued  and  assigned  prior  to  July  eighth,  eighteen 
hundred  and  seventy. 

Approved  March  3,  1871. 

Repealed  June  22,  1874.  Revised  Statutes,  Title 
LXXIV. 


THE    PATENT    ACT   OF    1871  939 

PATENT   ACT   OF    MARCH    24,    1871 

17  Statutes  at  Large,  2 

An  Act  to  further  regulate1  the  publication  of  the  speci- 
fications and  Drawings  of  the  Patent  Office 

.  Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled,  That 
if,  in  the  judgment  of  the  joint  committee  on  printing,  the 
pro  visions  of  the  joint  resolution  providing  for  publishing 
specifications  and  drawings  of  the  Patent  Office,  approved 
January  eleventh,  eighteen  hundred  and  seventy-one,  can 
be  performed  under  the  direction  of  the  Commissioner  of 
Patents  more  advantageously  than  in  the  manner  provided 
in  said  joint  resolution,  it  shall  be  so  done,  under  such  limi- 
tations and  conditions  as  the  joint  committee  on  printing 
may  from  time  to  time  prescribe. 

Section  2.  That  the  price  of  the  printed  copies  of 
specifications  and  drawings  of  patents,  when  uncertified, 
shall  be  determined  by  the  Commissioner  of  Patents, 
ten  cents  being  hereby  fixed  as  the  minimum,  and  fifty 
cents  as  the  maximum  price  of  the  same;  certified  copies 
to  be  sold  at  the  price  fixed  by  the  patent  act  of  eighteen 
hundred  and  seventy. 

Approved  March  24,  1871. 

Repealed  June  22,  1874.  Revised  Statutes,  Title 
LXXIV. 


940 


THE    PATENT   STATUTES 


THE   REVISED   STATUTES 


RELATING    TO    PATENTS 


1 10.  (  Inks  and  employes. 

111.  Secretary  of  the  Interior. 

475.  Establishment  of  the  Patent 

Office. 

476.  Officers  and  employes. 

477.  Salaries. 

478.  Seal. 

479.  Bonds  of  Commissioner  and 

chief  clerk. 

480.  Restrictions     upon     officers 

and  employes. 

481.  Duties  of  Commissioner. 

482.  Duties      of      examiners-in- 

chief. 

483.  Establishment     of     regula- 

tions. 

484.  Arrangement  and  exhibition 

of  models,  &c. 

485.  Disposals  of  models  on  re- 

jected applications. 

486.  Library. 

487.  Patent-agents   may   be    re- 

fused recognition. 

488.  Printing  of  papers  filed. 

489.  Printing    copies    of    claims, 

laws,  decisions,  &c. 

490.  Printing   specifications    and 

drawings. 

491.  Additional  specifications  and 

drawings. 

492.  Lithographing       and       en- 

graving. 

493.  Price  of  copies  of  specifica- 

tions and  drawings. 


494.  Annual  report  of  the  Com- 
missioner. 

496.  Disbursements  for  Patent- 
Office. 

629.  Jurisdiction  of  Circuit 
Courts. 

699.  Writs  of  error  and  appeals, 
without  reference  to 
amount. 

892.  Copies   of  records,   &c,   of 

Patent-Office. 

893.  Copies    of    foreign    letters- 

patent. 

894.  Printed  copies  of  specifica- 

tions    and     drawings     of 
patents. 
973.  Costs  where  disclaimers  are 
necessary. 

4883.  Patents,    how    issued,    at- 

tested, and  recorded. 

4884.  Their   contents  and  dura- 

tion. 

4885.  Date  of  patent. 

4886.  What  inventions  are  pat- 

entable. 

4887.  Patents  for  inventions  pre- 

viously patented  abroad. 

4888.  Requisites  of  specification 

and  claim. 

4889.  Drawings,      when     requi- 

site. 

4890.  Specimens    of    ingredients, 

&c. 

4891.  Model,  when  requisite. 


THE    REVISED   STATUTES 


941 


4892.  Oath  required  from  appli- 

cant. 

4893.  Examination    and     issuing 

patent. 

4894.  Limitation    upon    time    of 

completing  application. 

4895.  Patents  granted  to  assignee. 

4896.  When,  and  on  what  oath, 

executor  or  administrator 
may  obtain  patent. 

4897.  Renewal  of  application  in 

cases  of  failure  to  pay  fees 
in  season. 

4898.  Assignment  of  patents. 

4899.  Persons   purchasing  of   in- 

ventor before  application 
may  use  or  sell  the  thing 
purchased. 

4900.  Patented  articles  must  be 

marked  as  such. 

4901.  Penalty  for  falsely  marking 

or  labelling  articles  as 
patented. 

4902.  Filing  and  effect  of  caveats. 

4903.  Notice  of  rejection  of  claim 

for  patent  to  be  given  to 
applicant. 

4904.  Interferences. 

4905.  Affidavits  and  depositions. 

4906.  Subpoenas  to  witnesses. 

4907.  Witness  fees. 

4908.  Penalty  for  failing  to  attend 

or  refusing  to  testify. 

4909.  Appeals  from  primary  ex- 

aminers to  examiners-in- 
chief. 

4910.  From  examiners-in-chief  to 

Commissioner. 

4911.  From  the  Commissioner  to 

the  supreme  court,  D.  C. 


1912.   Notice  of  such  appeal. 

4913.  Proceedings   on    appeal    to 

supreme  court. 

4914.  Determination  of  such  ap- 

peal and  its  effect. 

4915.  Patents  obtainable  by  bill 

in  equity: 

4916.  Re-issue  of  defective  pat- 

cuts. 

4917.  Disclaimer. 

4918.  Suits   touching   interfering 

patents. 

4919.  Suits      for      infringement; 

damages. 

4920.  Pleading  and  proof  in  ac- 

tions for  infringement. 

4921.  Power  of  courts  to  grant  in- 

junctions    and     estimate 
damages. 

4922.  Suit        for       infringement 

where  specification  is  too 
broad. 

4923.  Patent  not  void  on  account 

of  previous  use  in  foreign 
countiy. 

4924.  Extension        of        patents 

granted  prior  to  March  2, 
1861. 

4925.  What  notice  of  application 

for    extension     must     be 
given. 

4926.  Applications      for      exten- 

sion  to  whom   to   be  re- 
ferred. 

4927.  Commissioner  to  hear  and 

decide  the  question  of  ex- 
tension. 

4928.  Operation  of  extension. 

4929.  Patent  for  designs  author- 

ized. 


9  I'J  PHE    PATENT  STATUTES 

1930.  Models  of  designs.  to  general  rules  of  patent- 

1931.  Duration  of  patents  for  de-  law. 

signs.  L934.  Fees  in  obtaining  patents, 

1932.  Extension  of  patents  for  de-  &c. 

signs.  1:935.  Mode  of  payment. 

1933.  Patents  for  designs  subject      -1936.  Refunding. 

Section  440.  There  shall  also  be  in  the  Department  of 
the  Interior: 

In  the  Patent  Office: 

One  chief  clerk,  at  a  salary  of  two  thousand  five  hundred 
dollars  a  year. 

One  examiner  in  charge  of  interferences,  at  a  salary  of 
two  thousand  five  hundred  dollars  a  year. 

One  examiner  in  charge  of  trade-marks,  at  a  salary  of 
two  thousand  five  hundred  dollars  a  year. 

Twenty-four  principal  examiners,  at  a  salary  of  two 
thousand  five  hundred  dollars  a  year  each. 

Twenty-four  first  assistant  examiners,  at  a  salary  of 
one  thousand  eight  hundred  dollars  a  year  each. 

Twenty-four  second  assistant  examiners  (two  of  whom 
may  be  women),  at  a  salary  of  one  thousand  six  hundred 
dollars  a  year  each. 

Twenty-four  thud  assistant  examiners,  at  a  salary  of 
one  thousand  four  hundred  dollars  a  year  each. 

One  librarian,  at  a  salary  of  two  thousand  dollars  a  year. 

One  machinist,  at  a"  salary  of  one  thousand  six  hundred 
dollars  a  year. 

Three  skilled  draughtsmen,  at  a  salary  of  one  thou- 
sand two  hundred  dollars  a  year  each. 

Thirty-five  copyists  of  drawings,  at  a  salary  of  one 
thousand  dollars  a  year  each. 

One  messenger  and  purchasing  clerk,  at  a  salary  of  one 
thousand  dollars  a  year. 


THE    REVISED    STATUTES  943 

One  skilled  laborer,  at  a  salary  of  one  thousand  two 
hundred  dollars  a  year. 

Eight  attendants  in  the  model-room,  at  a  salary  of  one 
thousand  dollars  a  year  each. 

Eight  attendants  in  the  model-room,  at  a  salary  of 
nine  hundred  dollars  a  year  each.  [See  prior  patent 
statutes:  Sections  2  and  3,  1870;  Sections  4  and  7,  1861; 
Sections  1  and  3,  1848;  Section  10,  1837;  Section  2,  1836.] 

Section  441.  The  Secretary  of  the  Interior  is  charged 
with  supervising  all  public  business  relating  to     *     *     * 

Fifth.  Patents  for  inventions.  [See  prior  patent  stat- 
utes: Section  1,  1870;  Section  2,  1849.] 

Section  475.  There  shall  be  in  the  Department  of  the 
Interior  an  office  known  as  the  Patent-Office,  where  all 
records,  books,  models,  drawings,  specifications,  and  other 
papers  and  things  pertaining  to  patents  shall  be  safely 
kept  and  preserved.  [See  prior  patent  statutes:  Section  1, 
1870;  Section  1,  1836.] 

Section  476.  There  shall  be  in  the  Patent-Office  a 
Commissioner  of  Patents,  one  Assistant  Coinmissioner, 
and  three  examiners-in-chief,  who  shall  be  appointed  by 
the  President,  by  and  with  the  advice  and  consent  of  the 
Senate.  All  other  officers,  clerks,  and  employes  authorized 
by  law  for  the  Office  shall  be  appointed  by  the  Secretary 
of  the  Interior,  upon  the  nomination  of  the  Commissioner 
of  Patents.  [See  prior  patent  statutes:  Section  2,  1870; 
Section  2,  1861;  Section  1,  1836.] 

Section  477.  The  salaries  of  the  officers  mentioned  in 
the  preceding  section  shall  be  as  follows: 

The  Commissioner  of  Patents,  four  thousand  five 
hundred  dollars  a  year. 

The  Assistant  Commissioner  of  Patents,  three  thousand 
dollars  a  year. 

Three  examiners-in-chief,  three  thousand  dollars  a  year 


'.Ill  THE    PATENT   STATUTES 

each.  [See  prior  patent  statutes;  Section  4,  1870;  Sections 
2  and  4,  1861 ;  Section  11,  1837;  Section  1,  1836.] 

Section  478.  The  seal  heretofore  provided  for  the 
Patent-Office  shall  be  the  seal  of  the  Office,  with  which 
letters-patent  and  papers  issued  from  the  Office  shall  be 
authenticated.  [See  prior  patent  statutes:  Section  12, 
1870;  Section  4,  1836.] 

Section  479.  The  Commissioner  of  Patents  and  the 
chief  clerk,  before  entering  upon  their  duties,  shall  severally 
give  bond,  with  sureties,  to  the  Treasurer  of  the  United 
States,  the  former  in  the  sum  of  ten  thousand  dollars,  and 
the  latter  in  the  sum  of  five  thousand  dollars,  conditioned 
for  the  faithful  discharge  of  their  respective  duties,  and 
that  they  shall  render  to  the  proper  officers  of  the  Treasury 
a  true  account  of  all  money  received  by  virtue  of  their 
offices.  [See  prior  patent  statutes:  Section  6,  1870;  Sec- 
tion 3,  1836.] 

Section  480.  All  officers  and  employes  of  the  Patent- 
Office  shall  be  incapable,  during  the  period  for  which  they 
hold  their  appointments,  to  acquire  or  take,  directly  or 
indirectly,  except  by  inheritance  or  bequest,  any  right  or 
interest  in  any  patent  issued  by  the  Office.  [See  prior 
patent  statutes:  Section  16,  1870.] 

Section  481.  The  Commissioner  of  Patents,  under  the 
direction  of  the  Secretary  of  the  Interior,  shall  superintend 
or  perform  all  duties  respecting  the  granting  and  issuing 
of  patents  directed  by  law;  and  he  shall  have  charge  of  all 
books,  records,  papers,  models,  machines,  and  other  things 
belonging  to  the  Patent-Office.  [See  prior  patent  statutes: 
Section  7,  1870;  Section  1,  1836.] 

Section  482.  The  examiners-in-chief  shall  be  persons  of 
competent  legal  knowledge  and  scientific  ability,  whose 
duty  it  shall  be,  on  the  written  petition  of  the  appellant, 
to  revise  and  determine  upon  the  validity  of  the  adverse 


THE    REVISED    STATUTES  945 

decisions  of  examiners  upon  applications  for  patents,  and 
for  re-issues  of  patents,  and  in  interference  cases;  and, 
when  required  by  the  Commissioner,  they  shall  hear  and 
report  upon  claims  for  extensions,  and  perform  such  other 
like  duties  as  he  may  assign  them.  [See  prior  patent 
statutes:  Section  10,  1870;  Section  2,  1861.] 

Section  483.  The  Commissioner  of  Patents,  subject 
to  the  approval  of  the  Secretary  of  the  Interior,  may  from 
time  to  time  establish  regulations,  not  inconsistent  with 
law,  for  the  conduct  of  proceedings  in  the  Patent-Office. 
[See  prior  patent  statutes:  Section  19,  1870.] 

Section  484.  The  Commissioner  of  Patents  shall  cause 
to  be  classified  and  arranged  in  suitable  cases,  in  the 
rooms  and  galleries  provided  for  that  purpose,  the  models, 
specimens  of  composition,  fabrics,  manufactures,  works 
of  art,  and  designs,  which  have  been  or  shall  be  deposited 
in  the  Patent-Office;  and  the  rooms  and  galleries  shall  be 
kept  open  during  suitable  hours  for  public  inspection. 
[See  prior  patent  statutes:  Section  13,  1870;  Section  20, 
1836.] 

Section  485.  The  Commissioner  of  Patents  may  re- 
store to  the  respective  applicants  such  of  the  models  be- 
longing to  rejected  applications  as  he  shall  not  think  neces- 
sary to  be  preserved,  or  he  may  sell  or  otherwise  dispose 
of  them  after  the  application  has  been  finally  rejected 
for  one  year,  paying  the  proceeds  into  the  Treasury,  as 
other  patent-moneys  are  directed  to  be  paid.  [See  prior 
patent  statutes:  Section  14,  1870;  Section  5,  1861.] 

Section  486.  There  shall  be  purchased  for  the  use  of  the 
Patent-Office  a  library  of  such  scientific  works  and  periodi- 
cals, both  foreign  and  American,  as  may  aid  the  officers  in 
the  discharge  of  their  duties,  not  exceeding  the  amount 
annually  appropriated  for  that  purpose.  [See  prior  patent 
statute:  Section  15,  1870.] 


946  TIIK     PATENT    STATUTES 

Section  487.  For  gross  misconduct  the  Commissioner 
of  Patents  may  refuse  to  recognize  any  person  as  a  patent- 
agent,  either  generally  or  in  any  particular  case;  but  the 
reasons  for  such  refusal  shall  be  duly  recorded,  and  be 
subject  to  the  approval  of  the  Secretary  of  the  Interior. 
[See  prior  patent  statute:  Section  17,  1870.] 

Section  488.  The  Commissioner  of  Patents  may  re- 
quire all  papers  filed  in  the  Patent-Office,  if  not  correctly, 
legibly,  and  clearly  written,  to  be  printed  at  the  cost  of 
the  party  filing  them.  [See  prior  patent  statutes:  Section 
18,  1870;  Section  8,  1861.] 

Section  489.  The  Commissioner  of  Patents  may  print, 
or  cause  to  be  printed,  copies  of  the  claims  of  current 
issues,  and  copies  of  such  laws,  decisions,  regulations,  and 
circulars  as  may  be  necessary  for  the  information  of  the 
public.    [See  prior  patent  statute:  Section  20,  1870.] 

Section  490.  The  Commissioner  of  Patents  is  author- 
ized to  have  printed,  from  time  to  time,  for  gratuitous 
distribution,  not  to  exceed  one  hundred  and  fifty  copies 
of  the  complete  specifications  and  drawings  of  each  patent 
hereafter  issued,  together  with  suitable  indexes,  one  copy 
to  be  placed  for  free  public  inspection  in  each  capitol  of 
every  State  and  Territory,  one  for  the  like  purpose  in  the 
clerk's  office  of  the  district  court  of  each  judicial  district 
of  the  United  States,  except  when  such  offices  are  located 
in  State  or  territorial  capitols,  and  one  in  the  Library  of 
Congress,  which  copies  shall  be  certified  under  the  hand  of 
the  Commissioner  and  seal  of  the  Patent-Office,  and  shall 
not  be  taken  from  the  depositories  for  any  other  purpose 
than  to  be  used  as  evidence.  [See  Joint  Resolution  No. 
5,  January  11,  1871,  16  Statutes  at  Large,  590.] 

Section  491.  The  Commissioner  of  Patents  is  author- 
ized to  have  printed  such  additional  numbers  of  copies 
of  specifications  and  drawings,  certified  as  provided  in  the 


THE    REVISED    STATUTES  !M7 

preceding  section,  at  a  price  not  to  exceed  the  contract 
price  for  such  drawings,  for  sale,  as  may  be  warranted  by 
the  actual  demand  for  the  same;  and  he  is  also  authorized 
to  furnish  a  complete  set  of  such  specifications  and  draw- 
ings to  any  public  library  winch  will  pay  for  binding  the 
same  into  volumes  to  correspond  with  those  in  the  Patent- 
Office,  and  for  the  transportation  of  the  same,  and  which 
shall  also  provide  for  proper  custody  for  the  same,  with 
convenient  access  for  the  public  thereto,  under  such  regu- 
lations as  the  Commissioner  shall  deem  reasonable.  [See 
Joint  Resolution  No.  5,  January  11,  1871,  16  Statutes  at 
Large,  590.] 

Section  492.  The  lithographing  and  engraving  required 
by  the  two  preceding  sections  shall  be  awarded  to  the  lowest 
and  best  bidders  for  the  interest  of  the  Government,  due 
regard  being  paid  to  the  execution  of  the  work,  after  due 
advertising  by  the  Congressional  Printer,  under  the  direc- 
tion of  the  Joint  Committee  on  Printing;  but  the  Joint 
Committee  on  Printing  may  empower  the  Congressional 
Printer  to  make  immediate  contracts  for  engraving,  when- 
ever, in  their  opinion,  the  exigencies  of  the  public  service 
will  not  justify  waiting  for  advertisement  and  award;  or 
if,  in  the  judgment  of  the  Joint  Committee  on  Printing, 
the  work  can  be  performed  under  the  direction  of  the 
Commissioner  of  Patents  more  advantageously  than  in 
the  manner,  above  prescribed,  it  shall  be  so  done,  under 
such  limitations  and  conditions  as  the  Joint  Committee 
on  Printing  may  from  time  to  time  prescribe.  [See  Joint 
Resolution  No.  5,  January  11,  1871,  16  Statutes  at  Large, 
590,  and  Section  1  of  Patent  Act  of  March  24,  1871.] 

Section  493.  The  price  to  be  paid  for  uncertified 
printed  copies  of  specifications  and  drawings  of  patents 
shall  be  determined  by  the  Commissioner  of  Patents, 
within  the  limits  of  ten  cents  as  the  minimum  and  fifty 


948  THE    PATENT   STATUTES 

cciiis  as  the  maximum  price.  [See  prior  patent  statute: 
Section  1,  March  24,  1871.] 

Section  494.  The  Commissioner  of  Patents  shall  lay 
before  Congress,  in  the  month  of  January,  annually,  a 
report,  giving  a  detailed  statement  of  all  moneys  received 
for  patents,  for  copies  of  records  or  drawings,  or  from  any 
other  source  whatever;  a  detailed  statement  of  all  expendi- 
tures for  contingent  and  miscellaneous  expenses;  a  list 
of  all  patents  which  were  granted  during  the  preceding 
year,  designating  under  proper  heads  the  subjects  of  such 
patents;  an  alphabetical  list  of  all  the  patentees,  with  their 
places  of  residence;  a  list  of  all  patents  which  have  been 
extended  during  the  year;  and  such  other  information  of 
the  condition  of  the  Patent-Office  as  may  be  useful  to 
Congress  or  the  public.  [See  prior  patent  statutes:  Sec- 
tion 9,  1870;  Section  14,  1837;  Section  1,  July  3,  1832.] 

Section  496.  All  disbursements  for  the  Patent-Office 
shall  be  made  by  the  disbursing  clerk  of  the  Interior 
Department.  [See  prior  patent  statutes:  Section  69,  1870; 
Section  14,  1837.] 

Section  629.  The  circuit  courts  shall  have  original 
jurisdiction,  as  follows:     *     *     * 

Ninth.  Of  all  suits  at  law  in  equity  arising  under  the 
patent  or  copyright  laws  of  the  United  States.  [See  prior 
patent  statutes:  Section  55,  1870;  Section  14,  1836;  Section 
1,  1819.] 

Section  699.  A  writ  of  error  may  be  allowed  to  review 
any  final  judgment  at  law,  and  an  appeal  shall  be  allowed 
from  any  final  decree  in  equity  hereinafter  mentioned, 
without  regard  to  the  sum  or  value  in  dispute : 

First.  Any  final  judgment  at  law  or  final  decree  in 
.equity  of  any  circuit  court,  or  of  any  district  court  acting 
as  a  circuit  court,  or  of  the  Supreme  Court  of  the  District 
of  Columbia,  or  of  any  Territory,  in  any  case  touching 


THE    REVISED    STATUTES  040 

patent -rights  or  copyrights.  [See  prior  patent  statutes: 
Section  56,  1870;  Section  1,  February  18,  1861;  Section  16, 
1836;  Section  1,  1810.] 

Section  892.  Written  or  printed  copies  of  any  records, 
books,  papers,  or  drawings  belonging  to  the  Patent-Office, 
and  of  letters-patent  authenticated  by  the  seal  and  certi- 
fied by  the  Commissioner  or  Acting  Commissioner  thereof, 
shall  be  evidence  in  all  cases  wherein  the  originals  could 
be  evidence;  and  any  person  making  application  therefor, 
and  paying  the  fee  required  by  law,  shall  have  certified 
copies  thereof.  [See  prior  patent  statutes:  Section  57, 
1870;  Section  15,  March  2,  1861;  Section  2,  1837;  Section 
4,  1836;  Sections  3,  6,  1790.] 

Section  893.  Copies  of  the  specifications  and  drawings 
of  foreign  letters-patent,  certified  as  provided  in  the  pre- 
ceding section,  shall  be  prima-facie  evidence  of  the  fact 
of  the  granting  of  such  letters-patent,  and  of  the  date  and 
contents  thereof.  [See  prior  patent  statute:  Section  57, 
1870.] 

Section  894.  The  printed  copies  of  specifications  and 
drawings  of  patents,  which  the  Commissioner  of  Patents 
is  authorized  to  print  for  gratuitous  distribution,  and  to 
deposit  in  the  capitols  of  the  States  and  Territories,  and 
in  the  clerk's  offices  of  the  district  courts,  shall,  when 
certified  by  him  and  authenticated  by  the  seal  of  his  office, 
be  received  in  all  courts  as  evidence  of  all  matters  therein 
contained.  [See  Joint  Resolution  No.  5,  January  11,  1871 ; 
16  Statutes  at  Large,  590.] 

Section  973.  When  judgment  or  decree  is  rendered 
for  the  plaintiff  or  complainant,  in  any  suit  at  law  or  in 
equity,  for  the  infringement  of  a  part  of  a  patent,  in  which 
it  appears  that  the  patentee,  in  his  specification,  claimed 
to  be  the  original  and  first  inventor  or  discoverer  of  any 
material  or  substantial  part  of  the  thing  patented,  of  which 


950  I'm:   I'vn.vr  statutes 

he  was  not  the  original  and  first  inventor,  no  costs  shall 
be  recovered,  unless  the  proper  disclaimer,  as  provided 
by  the  patent-laws,  has  been  entered  at  the  Patent-Office 
before  the  suit  was  brought.  [See  Revised  Statutes,  Sec- 
tion 4922;  and  prior  patent  statutes:  Section  60,  1870; 
Section  9,  1837;  Section  15,  1836.] 

Section  4883.  All  patents  shall  be  issued  in  the  name  of 
the  United  States  of  America,  under  the  seal  of  the  Patent 
Office,  and  shall  be  signed  by  the  Secretary  of  the  Interior 
and  countersigned  by  the  Commissioner  of  Patents,  and 
they  shall  be  recorded,  together  with  the  specifications,  in 
the  Patent  Office,  in  books  to  be  kept  for  that  purpose. 
[See  prior  patent  statutes:  Section  21,  1870;  Section  5, 
1836;  Section  1,  1793;  Section  1,  1790.] 

Section  4884.  Every  patent  shall  contain  a  short  title 
or  description  of  the  invention  or  discovery,  correctly 
indicating  its  nature  and  design,  and  a  grant  to  the  paten- 
tee, his  heirs  or  assigns,  for  the  term  of  seventeen  years, 
of  the  exclusive  right  to  make,  use,  and  vend  the  invention 
or  discovery  throughout  the  United  States,  and  the  Ter- 
ritories thereof,  referring  to  the  specification  for  the  partic- 
ulars thereof.  A  copy  of  the  specification  and  drawings 
shall  be  annexed  to  the  patent  and  be  a  part  thereof.  [See 
prior  patent  statutes:  Section  22,  1870;  Section  16,  1861; 
Section  5,  1836;  Section  1,  1793;  Section  1,  1790.] 

Section  4885.  Every  patent  shall  bear  date  as  of  a  day 
not  later  than  six  months  from  the  time  at  which  it  was 
passed  and  allowed  and  notice  thereof  was  sent  to  the 
applicant  or  his  agent;  and  if  the  final  fee  is  not  paid  within 
that  period  the  patent  shall  be  withheld.  [See  prior  patent 
statutes:  Section  23,  1870;  Section  3,  1863;  Section  8, 
1836.] 

Section  4886.  Any  person  who  has  invented  or  dis- 
covered any  new  and  useful  art,  machine,  manufacture  or 


THE    REVISED    STATUTES  951 

composition  of  matter,  or  any  new  and  useful  improvement 
thereof,  not  known  or  used  by  others  in  this  country,  and 
not  patented  or  described  in  any  printed  publication  in  this 
or  any  foreign  country,  before  his  invention  or  discovery 
thereof,  and  not  in  public  use  or  on  sale  for  more  than  two 
years  prior  to  his  application,  unless  the  same  is  proved 
to  have  been  abandoned,  may,  upon  payment  of  the  fees 
required  by  law,  and  other  due  proceedings  had,  obtain  a 
patent  therefor.  [See  prior  patent  statutes:  Section  24, 
1870;  Sections  6  and  7,  1836;  Section  1,  1800;  Section  1, 
1793.] 

Section  4887.  No  person  shall  be  debarred  from  re- 
ceiving a  patent  for  his  invention  or  discovery,  nor  shall 
any  patent  be  declared  invalid,  by  reason  of  its  having 
been  first  patented  or  caused  to  be  patented  in  a  foreign 
country,  unless  the  same  has  been  introduced  into  public 
use  in  the  United  States  for  more  than  two  years  prior 
to  the  application.  But  every  patent  granted  for  an  in- 
vention which  has  been  previously  patented  in  a  foreign 
country  shall  be  so  limited  as  to  expire  at  the  same  time 
with  the  foreign  patent,  or,  if  there  be  more  than  one,  at 
the  same  time  with  the  one  having  the  shortest  term,  and 
in  no  case  shall  it  be  in  force  more  than  seventeen  years. 
[See  prior  patent  statutes:  Section  25,  1870;  Section  6, 
1839;  Section  8,  1836.] 

Section  4888.  Before  any  inventor  or  discoverer  shall 
receive  a  patent  for  his  invention  or  discovery,  he  shall 
make  application  therefor,  in  writing,  to  the  Commis- 
sioner of  Patents,  and  shall  file  in  the  Patent-Office  a 
written  description  of  the  same,  and  of  the  manner  and 
process  of  making,  constructing,  compounding,  and  using 
it,  in  such  full,  clear,  concise,  and  exact  terms  as  to  enable 
any  person  skilled  in  the  art  or  science  to  which  it  apper- 
tains, or  with  which  it  is  most  nearly  connected,  to  make, 


952  i'i  1 1 :    PATENT   si'\  PI    PES 

construct,  compound  and  use  the  same;  and  in  case  of  a 
machine,  he  shall  explain  the  principle  thereof,  and  the 
besl  mode  in  which  he  has  contemplated  applying  that 
principle,  so  as  to  distinguish  it  from  other  inventions; 
and  he  shall  particularly  point  out  and  distinctly  claim, 
the  part,  improvement,  or  combination  which  he  claims 
as  his  invention  or  discovery.  The  specification  and  claim 
shall  be  signed  by  the  inventor  and  attested  by  two  wit- 
nesses. [See  prior  patent  statutes:  Section  26,  1870; 
Section  6,  1836;  Section  1,  1793;  Section  2,  1790.] 

Section  4889.  When  the  nature  of  the  case  admits  of 
drawings,  the  applicant  shall  furnish  one  copy,  signed  by 
the  inventor  or  his  attorney  in  fact,  and  attested  by  two 
witnesses,  which  shall  be  filed  in  the  Patent-Office,  and  a 
copy  of  the  drawing,  to  be  furnished  by  the  Patent-Office, 
shall  be  attached  to  the  patent  as  a  part  of  the  specifica- 
tion. [See  prior  patent  statutes:  Section  27,  1870;  Section 
6,  1837;  Section  6,  1836;  Section  3,  1793.] 

Section  4890.  When  the  invention  or  discovery  is  of  a 
composition  of  matter,  the  applicant,  if  required  by  the 
Commissioner,  shall  furnish  specimens  of  ingredients  and 
of  the  composition,  sufficient  in  quantity  for  the  purpose 
of  experiment.  [See  prior  patent  statutes:  Section  28, 
1870;  Section  6,  1836;  Section  3,  1793.] 

Section  4891.  In  all  cases  which  admit  of  representa- 
tion by  model,  the  applicant,  if  required  by  the  Commis- 
sioner, shall  furnish  a  model  of  convenient  size  to  exhibit 
advantageously  the  several  parts  of  his  invention  or  dis- 
covery. [See  prior  patent  statutes:  Section  29,  1870; 
Section  6,  1836;  Section  3,  1793;  Section  2,  1790.] 

Section  4892.  The  applicant  shall  make  oath  that  he 
does  verily  believe  himself  to  be  the  original  and  first 
inventor  or  discoverer  of  the  art,  machine,  manufacture, 
composition,  or  improvement  for  which  he  solicits  a  pat- 


THE    REVISED    STATUTES  953 

ent;  that  he  does  not  know  and  does  not  believe  that  the 
same  was  ever  before  known  or  used;  and  shall  state  of 
what  country  he  is  a  citizen.  Such  oath  may  be  made 
before  any  person  within  the  United  States  authorized 
by  law  to  administer  oaths,  or  when  the  applicant  resides 
in  a  foreign  country,  before  any  minister,  charge  d'affaires, 
consul,  or  commercial  agent,  holding  commission  under 
the  Government  of  the  United  States,  or  before  any 
notary  public  of  the  foreign  country  in  which  the  appli- 
cant may  be.  [See  prior  patent  statutes:  Section  30,  1870; 
Section  4,  1842;  Section  6,  1836;  Section  3,  1793.] 

Section  4893.  On  the  filing  of  any  such  application 
and  the  payment  of  the  fees  required  by  law,  the  Com- 
missioner of  Patents  shall  cause  an  examination  to  be 
made  of  the  alleged  new  invention  or  discovery;  and  if  on 
such  examination  it  shall  appear  that  the  claimant  is 
justly  entitled  to  a  patent  under  the  law,  and  that  the 
same  is  sufficiently  useful  and  important,  the  Commis- 
sioner shall  issue  a  patent  therefor.  [See  prior  patent 
statutes:  Section  31,  1870;  Section  7,  1836;  Section  1, 
1790.] 

Section  4894.  All  applications  for  patents  shall  be  com- 
pleted and  prepared  for  examination  within  two  years 
after  the  filing  of  the  application,  and  in  default  thereof, 
or  upon  failure  of  the  applicant  to  prosecute  the  same 
within  two  years  after  any  action  therein,  of  which  notice 
shall  have  been  given  to  the  applicant,  they  shall  be  re- 
garded as  abandoned  by  the  parties  thereto,  unless  it  be 
shown  to  the  satisfaction  of  the  Commissioner  of  Patents 
that  such  delay  was  unavoidable.  [See  prior  patent  stat- 
utes: Section  32,  1870;  Section  12,  1861.] 

Section  4895.  Patents  may  be  granted  and  issued  or 
re-issued  to  the  assignee  of  the  inventor  or  discoverer; 
but  the  assignment  must  first  be  entered  of  record  in  the 


954  THE    PATENT   STATUTES 

Patent-Office.  And  in  all  cases  of  an  application  by  an 
assignee  l'<>r  the  issue?  of  a  patent,  the  application  shall  be 
made  and  the  specification  sworn  to  by  the  inventor  or 

discoverer;  and  in  all  cases  of  an  application  for  a  re-issue 
of  any  patent,  the  application  must  be  made  and  the 
corrected  specification  signed  by  the  inventor  or  dis- 
coverer, if  he  is  living,  unless  the  patent  was  issued  and 
the  assignment  made  before  the  eighth  day  of  July, 
eighteen  hundred  and  seventy.  [See  prior  patent  stat- 
utes: Section  33,  1870;  Section  6,  1837.] 

Section  4896.  When  any  person,  having  made  any 
new  invention  or  discovery  for  which  a  patent  might 
have  been  granted,  dies  before  a  patent  is  granted,  the 
right  of  applying  for  and  obtaining  the  patent  shall  de- 
volve on  his  executor  or  administrator,  in  trust  for  the 
heirs  at  law  of  the  deceased,  in  case  he  shall  have  died 
intestate;  or  if  he  shall  have  left  a  will,  disposing  of  the 
same,  then  in  trust  for  his  devisees,  in  as  full  manner  and 
on  the  same  terms  and  conditions  as  the  same  might  have 
been  claimed  or  enjoyed  by  him  in  his  lifetime;  and  when 
the  application  is  made  by  such  legal  representatives, 
the  oath  or  affirmation  required  to  be  made  shall  be 
so  varied  in  form  that  it  can  be  made  by  them.  [See 
prior  patent  statutes:  Section  34,  1870;  Section  10,  1836; 
Section  2,  1800.] 

Section  4897.  Any  person  who  has  an  interest  in  an 
invention  or  discovery,  whether  as  inventor,  discoverer, 
or  assignee,  for  which  a  patent  was  ordered  to  issue  upon 
the  payment  of  the  final  fee,  but  who  fails  to  make  pay- 
ment thereof  within  six  months  from  the  tune  at  which 
it  was  passed  and  allowed,  and  notice  thereof  was  sent 
to  the  applicant  or  his  agent,  shall  have  a  right  to  make 
an  application  for  a  patent  for  such  invention  or  discovery 
the  same  as  in  the  case  of  an  original  application.     But 


THE    REVISED    STATUTES  955 

such  second  application  must  be  made  within  two  years 
after  the  allowance  of  the  original  application.  But  no 
person  shall  be  held  responsible  in  damages  for  the  man- 
ufacture or  use  of  any  article  or  thing  for  which  a  patent 
was  ordered  to  issue  under  such  renewed  application  prior 
to  the  issue  of  the  patent.  And  upon  the  hearing  of  re- 
newed applications  preferred  under  this  section,  abandon- 
ment shall  be  considered  as  a  question  of  fact.  [See  prior 
patent  statutes:  Section  35,  1870;  Section  1,  1865;  Section 
1,  1864.] 

Section  4898.  Every  patent  or  any  interest  therein 
shall  be  assignable  in  law,  by  an  instrument  in  writing; 
and  the  patentee  or  his  assigns  or  legal  representatives 
may,  in  like  manner,  grant  and  convey  an  exclusive  right 
tinder  his  patent  to  the  whole  or  any  specified  part  of  the 
United  States.  An  assignment,  grant,  or  conveyance 
shall  be  void  as  against  any  subsequent  purchaser  or  mort- 
gagee for  a  valuable  consideration,  without  notice,  unless 
it  is  recorded  in  the  Patent-Office  within  three  months 
from  the  date  thereof.  [See  prior  patent  statutes:  Sec- 
tion 36,  1870;  Section  11,  1836;  Section  4,  1793.] 

Section  4899.  Every  person  who  purchases  of  the 
inventor  or  discoverer,  or  with  his  knowledge  and  consent 
constructs  any  newly  invented  or  discovered  machine, 
or  other  patentable  article,  prior  to  the  application  by  the 
inventor  or  discoverer  for  a  patent,  or  who  sells  or  uses 
one  so  constructed,  shall  have  the  right  to  use,  and  vend 
to  others  to  be  used,  the  specific  thing  so  made  or  pur- 
chased, without  liability  therefor.  [See  prior  patent 
statutes:  Section  37, 1870;  Section  7, 1839.] 

Section  4900.  It  shall  be  the  duty  of  all  patentees, 
and  their  assigns  and  legal  representatives,  and  of  all 
persons  making  or  vending  any  patented  article  for  or 
under  them,  to  give  sufficient  notice  to  the  public  that  the 


956  THE    PATENT   STATUTES 

same  is  patented;  either  by  fixing  thereon  the  word  "pat- 
ented," together  with  the  day  and  year  the  patent  was 
granted;  or  when,  from  the  character  of  the  article,  this 
cannot  be  done,  by  fixing  to  it,  or  to  the  package  wherein 
one  or  more  of  them  is  inclosed,  a  label  containing  the 
like  notice;  and  in  any  suit  for  infringement,  by  the  party 
failing  so  to  mark,  no  damages  shall  be  recovered  by  the 
plaintiff,  except  on  proof  that  the  defendant  was  duly 
notified  of  the  infringement,  and  continued,  after  such 
notice,  to  make,  use,  or  vend  the  article  so  patented. 
[See  prior  patent  statutes:  Section  38,  1870;  Section  13, 
1861;  Section  6,  1842.] 

Section  4901.  Every  person  who,  in  any  manner,  marks 
upon  anything  made,  used,  or  sold  by  him  for  which  he  has 
not  obtained  a  patent,  the  name  or  any  imitation  of  the 
name  of  any  person  who  has  obtained  a  patent  therefor 
without  the  consent  of  such  patentee,  or  his  assigns  or 
legal  representatives;  or 

Who,  in  any  manner,  marks  upon  or  affixes  to  any  such 
patented  article  the  word  " patent"  or  "patentee,"  or 
the  words  "letters-patent,"  or  any  word  of  like  im- 
port, with  intent  to  imitate  or  counterfeit  the  mark 
or  device  of  the  patentee,  without  having  the  license  or 
consent  of  such  patentee  or  his  assigns  or  legal  represent- 
atives; or 

Who,  in  any  manner,  marks  upon  or  affixes  to  any 
unpatented  article  the  word  "patent,"  or  any  word  im- 
porting that  the  same  is  patented,  for  the  purpose  of  de- 
ceiving the  public,  shall  be  liable,  for  every  such  offence, 
to  a  penalty  of  not  less  than  one  hundred  dollars,  with 
costs;  one-half  of  said  penalty  to  the  person  who  shall  sue 
for  the  same,  and  the  other  to  the  use  of  the  United  States, 
to  be  recovered  by  suit  in  any  district  court  of  the  United 
States,  within  whose  jurisdiction  such  offence  may  have 


THE    REVISED    STATUTES  957 

been  committed.  [See  prior  patent  statutes:  Section  39, 
1870;  Section  5,  1842.] 

Section  4902.  Any  citizen  of  the  United  States  who 
makes  any  new  invention  or  discovery,  and  desires  fur- 
ther time  to  mature  the  same,  may,  on  payment  of  the 
fees  required  by  law,  file  in  the  Patent-Office  a  caveat 
setting  forth  the  design  thereof,  and  of  its  distinguish- 
ing characteristics,  and  praying  protection  of  his  right 
until  he  shall  have  matured  his  invention.  Such  caveat 
shall  be  filed  in  the  confidential  archives  of  the  office  and 
preserved  in  secrecy,  and  shall  be  operative  for  the  term 
of  one  year  from  the  filing  thereof;  and  if  application  is 
made  within  the  year  by  any  other  person  for  a  patent 
with  which  such  caveat  would  in  any  manner  interfere, 
the  Commissioner  shall  deposit  the  description,  specifi- 
cation, drawings,  and  model  of  such  application  in  like 
manner  in  the  confidential  archives  of  the  office,  and  give 
notice  thereof,  by  mail,  to  the  person  by  whom  the  caveat 
was  filed.  If  such  person  desires  to  avail  himself  of  his 
caveat,  he  shall  file  his  description,  specifications,  drawings, 
and  model  within  three  months  from  the  time  of  placing 
the  notice  in  the  post-office  in  Washington,  with  the  usual 
time  required  for  transmitting  it  to  the  caveator  added 
thereto;  which  time  shall  be  indorsed  on  the  notice.  An 
alien  shall  have  the  privilege  herein  granted,  if  he  has 
resided  in  the  United  States  one  year  next  preceding  the 
filing  of  his  caveat,  and  has  made  oath  of  his  intention  to 
become  a  citizen.  [See  prior  patent  statutes:  Section 
40,  1870;  Section  9,  1861;  Section  12,  1836.] 

Section  4903.  Whenever,  on  examination,  any  claim 
for  a  patent  is  rejected,  the  Commissioner  shall  notify 
the  applicant  thereof,  giving  him  briefly  the  reasons  for 
such  rejection,  together  with  such  information  and  ref- 
erences as  may  be  useful  in  judging  of  the  propriety  of 


958  THE    PATENT   STATUTES 

renewing  his  application  or  of  altering  his  specification; 
and  if,  after  receiving  such  notice,  the  applicant  persists 
in  his  claim  for  a  patent,  with  or  without  altering  his 
specifications,  the  Commissioner  shall  order  a  re-examina- 
tion of  the  case.  [See  prior  patent  statutes:  Section  41, 
L870;  Section  7,  1836.] 

Section  4904.  Whenever  an  application  is  made  for  a 
patent  which,  in  the  opinion  of  the  Commissioner,  would 
interfere  with  any  pending  application,  or  with  any  un- 
expired patent,  he  shall  give  notice  thereof  to  the  appli- 
cants, or  applicant  and  patentee,  as  the  case  may  be,  and 
shall  direct  the  primary  examiner  to  proceed  to  determine 
the  question  of  priority  of  invention.  And  the  Commis- 
sioner may  issue  a  patent  to  the  party  who  is  adjudged  the 
prior  inventor,  unless  the  adverse  party  appeals  from  the 
decision  of  the  primary  examiner,  or  of  the  board  of  ex- 
aminers-in-chief, as  the  case  may  be,  within  such  time, 
not  less  than  twenty  days,  as  the  Commissioner  shall 
prescribe.  [See  prior  patent  statutes:  Section  42,  1870; 
Section  8,  1836;  Section  9,  1793.] 

Section  4905.  The  Commissioner  of  Patents  may  es- 
tablish rules  for  taking  affidavits  and  depositions  required 
in  cases  pending  in  the  Patent-Office,  and  such  affidavits 
and  depositions  may  be  taken  before  any  officer  authorized 
by  law  to  take  depositions  to  be  used  in  the  courts  of  the 
United  States,  or  of  the  State  where  the  officer  resides. 
[See  prior  patent  statutes:  Section  43,  1870;  Section  1, 
March  3,  1861;  Section  12,  1839.] 

Section  4906.  The  clerk  of  any  court  of  the  United 
States,  for  any  district  or  Territory  wherein  testimony 
is  to  be  taken  for  use  in  any  contested  case  pending  in 
the  Patent-Office,  shall,  upon  the  application  of  any  party 
thereto,  or  of  his  agent  or  attorney,  issue  a  subpoena  for 
any  witness  residing  or  being  within  such   district   or 


THE    REVISED    STATUTES  959 

Territory,  commanding  him  to  appear  and  testify  before 
any  officer  in  such  district  or  Territory  authorized  to  take 
depositions  and  affidavits,  at  any  time  and  place  in  the 
subpoena  stated.  But  no  witness  shall  be  required  to 
attend  at  any  place  more  than  forty  miles  from  the  place 
where  the  subpoena  is  served  upon  him.  [See  prior  patent 
statutes:  Section  44,  1870;  Section  1,  1861.] 

Section  4907.  Every  witness  duly  subpoenaed  and  in 
attendance  shall  be  allowed  the  same  fees  as  are  allowed  to 
witnesses  attending  the  courts  of  the  United  States.  [See 
prior  patent  statutes:  Section  45,  1870;  Section  1,  18(51.] 

Section  4908.  Whenever  any  witness,  after  being  duly 
served  with  such  subpoena,  neglects  or  refuses  to  appear,  or 
after  appearing  refuses  to  testify,  the  judge  of  the  court 
whose  clerk  issued  the  subpoena  may,  on  proof  of  such 
neglect  or  refusal,  enforce  obedience  to  the  process,  or 
punish  the  disobedience,  as  in  other  like  cases.  But  no 
witness  shall  be  deemed  guilty  of  contempt  for  disobeying 
such  subpoena,  unless  his  fees  and  travelling  expenses  in 
going  to,  returning  from,  and  one  day's  attendance  at 
the  place  of  examination,  are  paid  or'  tendered  him  at  the 
time  of  the  service  of  the  subpoena;  nor  for  refusing  to 
disclose  any  secret  invention  or  discovery  made  or  owned 
by  himself.  [See  prior  patent  statutes :  Sections  44  and  45, 
1870;  Section  1,  1861.] 

Section  4909.  Every  applicant  for  a  patent  or  for  the 
reissue  of  a  patent,  any  of  the  claims  of  which  have  been 
twice  rejected,  and  every  party  to  an  interference,  may 
appeal  from  the  decision  of  the  primary  examiner,  or  of 
the  examiner  in  charge  of  interferences  in  such  case,  to 
the  board  of  examiners-in-chief;  having  once  paid  the  fee 
for  such  appeal.  [See  prior  patent  statutes:  Section  46, 
1870;  Section  1,  1866.] 

Section  4910.  If  such  party  is  dissatisfied  with  the 


960  THE    I'ATEN'T    STATUTES 

decision  of  the  examiners-in-chief,  he  may,  on  payment 
of  the  fee  prescribed,  appeal  to  the  Commissioner  in  per- 
son. [See  prior  patent  statutes:  Section  47,  1870;  Section 
2,  1801.] 

Section  4911.  If  such  party,  except  a  party  to  an  in- 
terference, is  dissatisfied  with  the  decision  of  the  Com- 
missioner, he  may  appeal  to  the  Supreme  Court  of  the 
District  of  Columbia,  sitting  in  banc.  [See  prior  patent 
statutes:  Section  48,  1870;  Section  1,  1852;  Section  11, 
1839.] 

Section  4912.  When  an  appeal  is  taken  to  the  Supreme 
Court  of  the  District  of  Columbia,  the  appellant  shall  give 
notice  thereof  to  the  Commissioner,  and  file  in  the  Patent- 
Office,  within  such  time  as  the  Commissioner  shall  appoint, 
his  reasons  of  appeal,  specifically  set  forth  in  writing.  [See 
prior  patent  statute :  Section  49,  1870.] 

Section  4913.  The  court  shall,  before  hearing  such  ap- 
peal, give  notice  to  the  Commissioner  of  the  time  and  place 
of  the  hearing,  and  on  receiving  such  notice  the  Commis- 
sioner shall  give  notice  of  such  time  and  place  in  such  man- 
ner as  the  court  may  prescribe,  to  all  parties  who  appear 
to  be  interested  therein.  The  party  appealing  shall  lay 
before  the  court  certified  copies  of  all  the  original  papers 
and  evidence  in  the  case,  and  the  Commissioner  shall 
furnish  the  court  with  the  grounds  of  his  decision,  fully 
set  forth  in  writing,  touching  all  the  points  involved  by 
the  reasons  of  appeal.  And  at  the  request  of  any  party 
interested,  or  of  the  court,  the  Commissioner  and  the 
examiners  may  be  examined  under  oath,  in  explanation 
of  the  principles  of  the  thing  for  which  a  patent  is  de- 
manded.   [See  prior  patent  statute:  Section  51,  1870.] 

Section  4914.  The  court,  on  petition,  shall  hear  and 
determine  such  appeal,  and  revise  the  decision  appealed 
from  in  a  summary  way,  on  the  evidence  produced  before 


THE    REVISED    STATUTES  961 

the  Commissioner,  at  such  early  and  convenient  time  as 
the  court  may  appoint;  and  the  revision  shall  be  confined 
to  the  points  set  forth  in  the  reasons  of  appeal.  After 
hearing  the  case  the  court  shall  return  to  the  Commis- 
sioner a  certificate  of  its  proceedings  and  decision,  which 
shall  be  entered  of  record  in  the  Patent-Office,  and  shall 
govern  the  further  proceedings  in  the  case.  But  no  opin- 
ion or  decision  of  the  court  in  any  such  case  shall  pre- 
clude any  person  interested  from  the  right  to  contest  the 
validity  of  such  patent  in  any  court  wherein  the  same 
may  be  called  in  question.  [See  prior  patent  statute: 
Section  50,  1870.] 

Section  4915.  Whenever  a  patent  on  application  i> 
refused,  either  by  the  Commissioner  of  Patents  or  by  the 
Supreme  Court  of  the  District  of  Columbia  upon  appeal 
from  the  Commissioner,  the  applicant  may  have  remedy 
by  bill  in  equity;  and  the  court  having  cognizance  thereof, 
on  notice  to  adverse  parties  and  other  due  proceedings  had, 
may  adjudge  that  such  applicant  is  entitled,  according 
to  law,  to  receive  a  patent  for  his  invention,  as  specified 
in  his  claim,  or  for  any  part  thereof,  as  the  facts  in  the  case 
may  appear.  And  such  adjudication,  if  it  be  in  favor  of 
the  right  of  the  applicant,  shall  authorize  the  Commis- 
sioner to  issue  such  patent  on  the  applicant  filing  in  the 
Patent-Office  a  copy  of  the  adjudication,  and  otherwise 
complying  with  the  requirements  of  law.  In  all  cases, 
where  there  is  no  opposing  party,  a  copy  of  the  bill  shall 
be  served  on  the  Commissioner;  and  all  the  expenses  of 
the  proceeding  shall  be  paid  by  the  applicant,  whether  the 
final  decision  is  in  his  favor  or  not.  [See  Revised  Statutes 
and  prior  patent  statutes:  Section  52,  1870;  Section  10, 
1839.] 

Section  4916.  Whenever  any  patent  is  inoperative  or 
invalid,  by  reason  of  a  defective  or  insufficient  specifica- 


■*  * 


962  THE    PATENT   STATUTES 

tion,  or  by  reason  of  the  patentee  claiming  as  his  own 
invention  or  discovery  more  than  he  had  a  right  to  claim 
as  new,  if  the  error  has  arisen  by  inadvertence,  accident, 
or  mistake,  and  without  any  fraudulent  or  deceptive 
intention,  the  Commissioner  shall,  on  the  surrender  of 
such  patent  and  the  payment  of  the  duty  required  by  law, 
cause  a  new  patent  for  the  same  invention,  and  in  accord- 
ance with  the  corrected  specification,  to  be  issued  to  the 
patentee,  or,  in  the  case  of  his  death  or  of  an  assignment 
of  the  whole  or  any  undivided  part  of  the  original  patent, 
then  to  his  executors,  administrators,  or  assigns,  for  the 
unexpired  part  of  the  term  of  the  original  patent.  Such 
surrender  shall  take  effect  upon  the  issue  of  the  amended 
patent.  The  Commissioner  may,  in  his  discretion,  cause 
several  patents  to  be  issued  for  distinct  and  separate  parts 
of  the  thing  patented,  upon  demand  of  the  applicant,  and 
upon  payment  of  the  required  fee  for  a  re-issue  for  each  of 
such  re-issued  letters-patent.  The  specifications  and 
claim  in  every  such  case  shall  be  subject  to  revision  and 
restriction  in  the  same  manner  as  original  applications  are. 
Every  patent  so  re-issued,  together  with  the  corrected 
specification,  shall  have  the  same  effect  and  operation  in 
law,  on  the  trial  of  all  actions  for  causes  thereafter  arising, 
as  if  the  same  had  been  originally  filed  in  such  corrected 
form;  but  no  new  matter  shall  be  introduced  into  the 
specification,  nor  in  case  of  a  machine-patent  shall  the 
model  or  drawings  be  amended,  except  each  by  the  other; 
but  when  there  is  neither  model  nor  drawing,  amendments 
may  be  made  upon  proof  satisfactory  to  the  Commis- 
sioner that  such  new  matter  or  amendment  was  a  part 
of  the  original  invention,  and  was  omitted  from  the  speci- 
fication by  inadvertence,  accident,  or  mistake,  as  afore- 
said. [See  prior  patent  statutes:  Section  53,  1870;  Sections 
5  and  8,  1837;  Section  13,  1836;  Section  3,  1832.] 


THE    REVISED    STATUTES  9()3 

Section  4917.  Whenever,  through  inadvertence,  acci- 
dent, or  mistake,  and  without  any  fraudulent  or  deceptive 
intention,  a  patentee  has  claimed  more  than  that  of  which 
he  was  the  original  or  first  inventor  or  discoverer,  his 
patent  shall  be  valid  for  all  that  part  which  is  truly  and 
justly  his  own,  provided  the  same  is  a  material  or  sub- 
stantial part  of  the  thing  patented;  and  any  such  patentee, 
his  heirs  or  assigns,  whether  of  the  whole  or  any  sectional 
interest  therein,  may,  on  payment  of  the  fee  required  by 
law,  make  disclaimer  of  such  parts  of  the  thing  patented 
as  he  shall  not  choose  to  claim  or  to  hold  by  virtue  of  the 
patent  or  assignment,  stating  therein  the  extent  of  his 
interest  in  such  patent.  Such  disclaimer  shall  be  in  writ- 
ing, attested  by  one  or  more  witnesses,  and  recorded  in 
the  Paten t-Office;  and  it  shall  thereafter  be  considered  as 
part  of  the  original  specification  to  the  extent  of  the  inter- 
est possessed  by  the  claimant  and  by  those  claiming  under 
him  after  the  record  thereof.  But  no  such  disclaimer 
shall  affect  any  action  pending  at  the  time  of  its  being 
filed,  except  so  far  as  may  relate  to  the  question  of  unrea- 
sonable neglect  or  delay  in  filing  it.  [See  prior  patent 
statutes:  Section  54,  1870;  Section  7,  1837.] 

Section  4918.  Whenever  there  are  interfering  patents, 
any  person  interested  in  any  one  of  them,  or  in  the  working 
of  the  invention  claimed  under  either  of  them,  may  have 
relief  against  the  interfering  patentee,  and  all  parties 
interested  under  him,  by  suit  in  equity  against  the  owners 
of  the  interfering  patent;  and  the  court,  on  notice  to  ad- 
verse parties,  and  other  due  proceedings  had  according 
to  the  course  of  equity,  may  adjudge  and  declare  either 
of  the  patents  void  in  whole  or  in  part,  or  inoperative,  or 
invalid  in  any  particular  part  of  the  United  States,  accord- 
ing to  the  interest  of  the  parties  in  the  patent  or  the  in- 
vention patented.     But  no  such  judgment  or  adjudica- 


96  I  I'll'-     I'ATKXT    STAIVTES 

tion  shall  affecl  the  right  of  any  person  except  the  parties 
to  the  suit  and  those  deriving  title  under  them  subsequent 
to  the  rendition  of  such  judgment.  [See  prior  patent 
statutes:  Section  58,  1870;  Section  16,  1836.] 

Section  4919.  Damages  for  the  infringement  of  any 
patent  may  be  recovered  by  action  on  the  case,  in  the  name 
of  the  party  interested,  either  as  patentee,  assignee,  or 
grantee.  And  whenever  in  any  such  action  a  verdict  is 
rendered  for  the  plaintiff,  the  court  may  enter  judg- 
ment thereon  for  any  sum  above  the  amount  found 
by  the  verdict  as  the  actual  damages  sustained,  ac- 
cording to  the  circumstances  of  the  case,  not  exceeding 
three  times  the  amount  of  such  verdict,  together  with 
the  costs.  [See  prior  patent  statutes:  Section  55,  1870; 
Section  14,  1836;  Section  3,  1800;  Section  5,  1793; 
Section  4,  1790.] 

Section  4920.  In  any  action  for  infringement  the  de- 
fendant may  plead  the  general  issue,  and  having  given 
notice  in  writing  to  the  plaintiff  or  his  attorney,  thirty 
days  before,  may  prove  on  trial  any  one  or  more  of  the 
following  special  matters: 

First.  That  for  the  purpose  of  deceiving  the  public  the 
description  and  specification  filed  by  the  patentee  in  the 
Patent-Office  was  made  to  contain  less  than  the  whole 
truth  relative  to  his  invention  or  discovery,  or  more  than 
is  necessary  to  produce  the  desired  effect :  or, 

Second.  That  he  had  surreptitiously  or  unjustly  ob- 
tained the  patent  for  that  which  was  in  fact  invented  by 
another,  who  was  using  reasonable  diligence  in  adapting 
and  perfecting  the  same;  or, 

Third.  That  it  had  been  patented  or  described  in  some 
printed  publication  prior  to  his  supposed  invention  or 
discovery  thereof;  or, 

Fourth.  That  he  was  not  the  original  and  first  inventor 


THE    REVISED    STATUTES  %."> 

or  discoverer  of  any  material  and  substantial  part  of  the 
tiling  patented;  or, 

Fifth.  That  it  had  been  in  public  use  or  on  sale  in  this 
country  for  more  than  two  years  before  his  application  for 
a  patent,  or  had  been  abandoned  to  the  public. 

And  in  notices  as  to  proof  of  previous  invention,  knowl- 
edge, or  use  of  the  thing  patented,  the  defendant  shall 
state  the  names  of  patentees  and  the  dates  of  their  patents, 
and  when  granted,  and  the  names  and  residences  of  the 
persons  alleged  to  have  invented,  or  to  have  had  the 
prior  knowledge  of  the  thing  patented,  and  where  and  by 
whom  it  had  been  used;  and  if  any  one  or  more  of  the 
special  matters  alleged  shall  be  found  for  the  defendant, 
judgment  shall  be  rendered  for  him  with  costs.  And  the 
like  defences  may  be  pleaded  in  any  suit  in  equity  for 
relief  against  an  alleged  infringement;  and  proofs  of  the 
same  may  be  given  upon  like  notice  in  the  answer  of  the 
defendant,  and  with  the  like  effect.  [See  prior  patent 
statutes:  Section  61,  1870;  Section  15,  1836;  Section  6, 
1793;  Section  6,  1790.] 

Section  4921.  The  several  courts  vested  with  juris- 
diction of  cases  arising  under  the  patent  laws  shall  have 
power  to  grant  injunctions  according  to  the  course  and 
principles  of  courts  of  equity,  to  prevent  the  violation  of 
any  right  secured  by  patent,  on  such  terms  as  the  court 
may  deem  reasonable;  and  upon  a  decree  being  rendered 
in  any  such  case  for  an  infringement,  the  complainant 
shall  be  entitled  to  recover,  in  addition  to  the  profits  to 
be  accounted  for  by  the  defendant,  the  damages  the  com- 
plainant has  sustained  thereby;  and  the  court  shall  assess 
the  same  or  cause  the  same  to  be  assessed  under  its  direc- 
tion. And  the  court  shall  have  the  same  power  to  increase 
such  damages,  in  its  discretion,  as  is  given  to  increase 
the  damages  found  by  verdicts  in  actions  in  the  nature  of 


966  THE    PATENT   STATUTES 

actions  of  trespass  upon  the  case.  [See  prior  patent 
statutes:  Section  55,  1870;  Section  17,  1830;  Section  1, 
L819.] 

Section  4922.  Whenever,  through  inadvertence,  acci- 
dent, or  mistake,  and  without  any  willful  default  or  in- 
tent to  defraud  or  mislead  the  public,  a  patentee  has,  in 
his  specification,  claimed  to  be  the  original  and  first  in- 
ventor or  discoverer  of  any  material  or  substantial  part 
of  the  thing  patented,  of  which  he  was  not  the  original  and 
first  inventor  or  discoverer,  every  such  patentee,  his 
executors,  administrators,  and  assigns,  whether  of  the 
whole  or  any  sectional  interest  in  the  patent,  may  main- 
tain a  suit  at  law  or  in  equity,  for  the  infringement  of  any 
part  thereof,  which  was  bona  fide  his  own,  if  it  is  a  material 
and  substantial  part  of  the  thing  patented,  and  definitely 
distinguishable  from  the  parts  claimed  without  right, 
notwithstanding  the  specifications  may  embrace  more 
than  that  of  which  the  patentee  was  the  first  inventor  or 
discoverer.  But  in  every  such  case  in  which  a  judgment 
or  decree  shall  be  rendered  for  the  plaintiff,  no  costs  shall 
be  recovered  unless  the  proper  disclaimer  has  been  entered 
at  the  Patent-Office  before  the  commencement  of  the  suit. 
But  no  patentee  shall  be  entitled  to  the  benefits  of  this 
section  if  he  has  unreasonably  neglected  or  delayed  to 
enter  a  disclaimer.  [See  prior  patent  statutes:  Section  60, 
1870;  Section  9,  1837.] 

Section  4923.  Whenever  it  appears  that  a  patentee,  at 
the  time  of  making  his  application  for  the  patent,  believed 
himself  to  be  the  original  and  first  inventor  or  discoverer 
of  the  thing  patented,  the  same  shall  not  be  held  to  be 
void  on  account  of  the  invention  or  discovery,  or  any  part 
thereof,  having  been  known  or  used  in  a  foreign  country, 
before  his  invention  or  discovery  thereof,  if  it  had  not 
been  patented  or  described  in  a  printed  publication.    [See 


THE    REVISED    STATUTES  967 

prior  patent  statutes:  Section  62,  1870;  Section  15, 
1836.] 

Section  4924.  Where  the  patentee  of  any  invention  or 
discovery,  the  patent  for  which  was  granted  prior  to  the 
second  day  of  March,  eighteen  hundred  and  sixty-one, 
shall  desire  an  extension  of  this  patent  beyond  the  original 
term  of  its  limitation,  he  shall  make  application  therefor, 
in  writing,  to  the  Commissioner  of  Patents,  setting  forth 
the  reasons  why  such  extension  should  be  granted;  and  he 
shall  also  furnish  a  written  statement  under  oath  of  the 
ascertained  value  of  the  invention  or  discovery,  and  of  his 
receipts  and  expenditures  on  account  thereof,  sufficiently 
in  detail  to  exhibit  a  true  and  faithful  account  of  the  loss 
and  profit  in  any  manner  accruing  to  him  by  reason  of 
the  invention  or  discovery.  Such  application  shall  be 
filed  not  more  than  six  months  nor  less  than  ninety  days 
before  the  expiration  of  the  original  term  of  the  patent; 
and  no  extension  shall  be  granted  after  the  expiration  of 
the  original  term.  [See  prior  patent  statutes:  Section  63, 
1870;  Section  1,  1848;  Section  18,  1836;  Section  2,  July  3, 
1832.] 

Section  4925.  Upon  the  receipt  of  such  application,  and 
the  payment  of  the  fees  required  by  law,  the  Commissioner 
shall  cause  to  be  published  in  one  newspaper  in  the  city 
of  Washington,  and  in  such  other  papers  published  in  the 
section  of  the  country  most  interested  adversely  to  the 
extension  of  the  patent  as  he  may  deem  proper,  for  at 
least  sixty  days  prior  to  the  day  set  for  hearing  the  case, 
a  notice  of  such  application,  and  of  the  time  and  place 
when  and  where  the  same  will  be  considered,  that  any  per- 
son may  appear  and  show  cause  why  the  extension  should 
not  be  granted.  [See  prior  patent  statutes:  Section  64, 
1870;  Section  18,  1836.] 

Section  4926.  Upon  the  publication  of  the  notice  of  an 


968  THE    PATENT   STATUTES 

application  for  an  extension,  the  Commissioner  shail  refer 
the  case  to  the  principal  examiner  having  charge  of  the 
class  of  inventions  to  which  it  belongs,  who  shall  make  the 
Commissioner  a  full  report  of  the  case,  stating  particularly 
whether  the  invention  or  discovery  was  new  and  patenta- 
ble when  the  original  patent  was  granted.  [See  prior 
patent  statutes:  Section  65,  1870;  Section  1,  1848;  Section 
18,  1836.] 

Section  4927.  The  Commissioner  shall,  at  the  time  and 
place  designated  in  the  published  notice,  hear  and  decide 
upon  the  evidence  produced,  both  for  and  against  the 
extension;  and  if  it  shall  appear  to  the  satisfaction  of  the 
Commissioner  that  the  patentee,  without  neglect  or  fault 
on  his  part,  has  failed  to  obtain  from  the  use  and  sale  of 
his  invention  or  discovery  a  reasonable  remuneration  for 
the  time,  ingenuity,  and  expense  bestowed  upon  it,  and 
the  introduction  of  it  into  use,  and  that  it  is  just  and 
proper,  having  due  regard  to  the  public  interest,  that  the 
term  of  the  patent  should  be  extended,  the  Commissioner 
shall  make  a  certificate  thereon,  renewing  and  extending 
the  patent  for  the  term  of  seven  years  from  the  expiration 
of  the  first  term.  Such  certificate  shall  be  recorded  in 
the  Patent-Office;  and  thereupon  such  patent  shall  have 
the  same  effect  in  law  as  though  it  had  been  originally 
granted  for  twenty-one  years.  [See  prior  patent  statutes; 
Section  66,  1870;  Section  18,  1836.] 

Section  4928.  The  benefit  of  the  extension  of  a  patent 
shall  extend  to  the  assignees  and  grantees  of  the  right  to 
use  the  thing  patented,  to  the  extent  of  their  interest 
therein.  [See  prior  patent  statutes:  Section  67,  1870; 
Section  18,  1836.] 

Section  4929.  Any  person  who,  by  his  own  industry, 
genius,  efforts,  and  expense,  has  invented  and  produced 
any  new  and  original  design  for  a  manufacture,  bust, 


THE    REVISED    STATUTES  *  > *  i *. » 

statue,  alto-relievo,  or  bas-relief;  any  new  and  original 
design  for  the  printing  of  woolen,  silk,  cotton,  or  other 
fabrics;  any  new  and  original  impression,  ornament,  pat- 
ent, print,  or  picture  to  be  printed,  painted,  cast,  or  other- 
wise placed  on  or  worked  into  any  article  of  manufacture; 
or  any  new,  useful,  and  original  shape  or  configuration  of 
any  article  of  manufacture,  the  same  not  having  been 
known  or  used  by  others  before  his  invention  or  produc- 
tion thereof,  or  patented  or  described  in  an}-  printed  pub- 
lication, may,  upon  payment  of  the  fee  prescribed,  and 
other  due  proceedings  had  the  same  as  in  cases  of  inven- 
tions or  discoveries,  obtain  a  patent  therefor.  [See  prior 
patent  statutes:  Section  71,  1870;  Section  11,  March  2, 
1861 ;  Section  3,  1842.] 

Section  4930.  The  Commissioner  may  dispense  with 
models  of  designs  when  the  design  can  be  sufficiently 
represented  by  drawings  or  photographs.  [See  prior  pat- 
ent statute:  Section  72,  1870.] 

Section  4931.  Patents  for  designs  may  be  granted  for 
the  term  of  three  years  and  six  months,  or  for  seven  years. 
or  for  fourteen  years,  as  the  applicant  may,  in  his  appli- 
cation, elect.  [See  prior  patent  statutes:  Section  73,  1870: 
Section  11,  1861;  Section  3,  1842.] 

Section  4932.  Patentees  of  designs  issued  prior  to  the 
second  day  of  March,  eighteen  hundred  and  sixty-one, 
shall  be  entitled  to  extension  of  their  respective  patents 
for  the  term  of  seven  years,  in  the  same  manner  and  under 
the  same  restrictions  as  are  provided  for  the  extension  of 
patents  for  inventions  or  discoveries,  issued  prior  to  the 
second  day  of  March,  eighteen  hundred  and  sixty-one. 
[See  prior  patent  statutes:  Section  74,  1870;  Section  11, 
March  2,  1861.] 

Section  4933.  All  the  regulations  and  provisions 
which  apply  to  obtaining  or  protecting  patents  for  in- 


970  THE    PATENT   STATUTES 

\ ciil  ions  or  discoveries  not  inconsistent  with  the  provisions 
of  tli is  Title,  shall  apply  to  patents  for  designs.  [See 
prior  patent  statute:  Section  76,  1870.] 

Section  4934.  The  following  shall  be  the  rate  for  pat- 
ent-fees: 

On  filing  each  original  application  for  a  patent,  except 
in  design  cases,  fifteen  dollars. 

On  issuing  each  original  patent,  except  in  design  cases, 
twenty  dollars. 

In  design  cases:  For  three  years  and  six  months,  ten 
dollars;  for  seven  years,  fifteen  dollars;  for  fourteen  years, 
thirty  dollars. 

On  filing  each  caveat,  ten  dollars. 

On  every  application  for  the  re-issue  of  a  patent,  thirty 
dollars. 

On  filing  each  disclaimer,  ten  dollars. 

On  every  application  for  the  extension  of  a  patent, 
fifty  dollars. 

On  the  granting  of  every  extension  of  a  patent,  fifty 
dollars. 

On  an  appeal  for  the  first  time  from  the  primary  ex- 
aminers to  the  examiners-in-chief,  ten  dollars. 

On  every  appeal  from  the  examiners-in-chief  to  the 
Commissioner,  twenty  dollars. 

For  certified  copies  of  patents  and  other  papers,  includ- 
ing certified  printed  copies,  ten  cents  per  hundred  words. 

For  recording  every  assignment,  agreement,  power  of 
attorney,  or  other  paper,  of  three  hundred  words  or  under, 
one  dollar;  of  over  three  hundred  and  under  one  thousand 
words,  two  dollars;  of  over  one  thousand  words,  three 
dollars. 

For  copies  of  drawings,  the  reasonable  cost  of  making 
them.  [See  prior  patent  statutes:  Section  2,  March  24, 
|871;  Sections  68  and  75,  1870;  Section  1,  1866;  Section 


THE  PATENT  ACT  OF  1875  971 

10,  March  2,  1861;  Section  2,  1848;  Section  8,  1839; 
Sections  4,  9,  11,  1836;  Section  11,  1793;  Section  7,  1790.] 

Section  4935.  Patent-fees  may  be  paid  to  the  Com- 
missioner of  Patents,  or  to  the  Treasurer  or  any  of  the 
assistant  treasurers  of  the  United  States,  or  to  any  of  the 
designated  depositaries,  national  banks,  or  receivers  of 
public  money,  designated  by  the  Secretary  of  the  Treasury 
for  that  purpose;  and  such  officer  shall  give  the  depositor 
a  receipt  or  certificate  of  deposit  therefor.  All  money 
received  at  the  Patent-Office,  for  any  purpose,  or  from  any 
source  whatever,  shall  be  paid  into  the  Treasury  as  re- 
ceived, without  any  deduction  whatever.  [See  prior  patent 
statutes:  Section  69,  1870;  Section  14,  1837.] 

Section  4936.  The  Treasurer  of  the  United  States  is 
authorized  to  pay  back  any  sum  or  sums  of  money  to 
any  person  who  has  through  mistake  paid  the  same  into 
the  Treasury,  or  to  any  receiver  or  depositary,  to  the 
credit  of  the  Treasury,  as  for  fees  accruing  at  the  Patent- 
Office,  upon  a  certificate  thereof  being  made  to  the  Treas- 
urer by  the  Commissioner  of  Patents.  [See  prior  patent 
statutes:  Section  69,  1870;  Section  1,  1842.] 

Approved  June  22,  1874. 

PATENT  ACT  OF  FEBRUARY   16,   1875 

18  Statutes  at  Large,  Part  3,  316 

Section  2  of  an  Act  to  facilitate  the  disposition  of  cases  in 
the  Supreme  Court  of  the  United  States,  and  for 
other  purposes 

Section  2.  The  said  [circuit]  courts,  when  sitting  in 
equity  for  the  trial  of  patent  causes,  may  empanel  a  jury 
of  not  less  than  five  and  not  more  than  twelve  persons, 


972  THE    PATENT   STATUTES 

subject  to  such  general  rules  in  the  premises,  as  may  from 
time  to  time  be  made  by  the  Supreme  Court,  and  submit 
to  them  such  questions  of  fact  arising  in  such  cause  as 
such  circuit  court  shall  deem  expedient;  and  the  verdict 
of  such  jury  shall  be  treated  and  proceeded  upon  in  the 
sau ie  manner  and  with  the  same  effect  as  in  the  case  of 
issues  sent  from  chancery  to  a  court  of  law  and  returned 
with  such  findings. 
Approved  February  16,  1875. 

PATENT   ACT  OF   1887 

24  Statutes  at  Large,  Chap.  105 

An  Act  to  amend  the  law  relating  to  patents,  trade-marks 
and  copyright- 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled,  That 
hereafter,  during  the  term  of  letters  patent  for  a  design,  it 
shall  be  unlawful  for  any  person,  other  than  the  owner  of 
said  letters  patent,  without  the  license  of  such  owner,  to 
apply  the  design  secured  by  such  letters  patent,  or  any 
colorable  imitation  thereof,  to  any  article  of  manufacture, 
for  the  purpose  of  sale,  or  to  sell  or  expose  for  sale  any 
article  of  manufacture  to  which  such  design  or  colorable 
imitation  shall  without  the  license  of  the  owner,  have  been 
applied,  knowing  that  the  same  has  been  so  applied. 

Any  person  violating  the  provisions,  or  either  of  them, 
of  this  section,  shall  be  liable  in  the  amount  of  two  hun- 
dred and  fifty  dollars;  and  in  case  the  total  profit  made  by 
him  from  the  manufacture  or  sale,  as  aforesaid,  of  the 
article  or  articles  to  which  the  design,  or  colorable  imita- 
tion thereof,  has  been  applied,  exceeds  the  sum  of  two 


THE  PATENT  ACT  OF  1888  973 

hundred  and  fifty  dollars,  he  shall  be  further  liable  for 
the  excess  of  such  profit  over  and  above  the  sum  of  two 
hundred  and  fifty  dollars. 

And  the  full  amount  of  such  liability  may  be  recovered 
by  the  owner  of  the  letters  patent,  to  his  own  use,  in  any 
circuit  court  of  the  United  States,  having  jurisdiction  of 
the  parties,  either  by  action  at  law,  or  upon  a  bill  in  equity 
for  an  injunction  to  restrain  such  infringement. 

Section  2.  That  nothing  in  this  act  contained  shall  pre- 
vent, lessen,  impeach,  or  avoid  any  remedy  at  law  or  in 
equity  which  any  owner  of  letters  patent  for  a  design, 
aggrieved  by  the  infringement  of  the  same,  might  have 
had  if  this  act  had  not  been  passed;  but  such  owner  shall 
not  twice  recover  the  profit  made  from  the  infringement. 

Approved  February  4,  1887. 

PATENT  ACT   OF   1888 

25  Statutes  at  Large,  Chap.  15 

An  Act  to  amend  section  four  thousand  eight  hundred 
and  eighty-three  of  the  Revised  Statutes,  to  enable 
the  Assistant  Secretary  of  the  Interior  to  sign  patents. 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled, 
That  section  four  thousand  eight  hundred  and  eighty- 
three  of  the  Revised  Statutes  is  hereby  amended  by  in- 
serting after  the  words  " Secretary  of  the  Interior,"  where 
they  occur  therein,  the  following  words:  "or  under  his 
direction  by  one  of  the  Assistant  Secretaries  of  the  In- 
terior," so  that  the  said  section  as  amended  will  read  as 
follows : 

"Section  4883.  All  patents  shall  be  issued  in  the  name 


<)7I  THE    PATENT   STATUTES 

of  the  United  States  of  America,  under  the  seal  of  the 
Patent  Office,  and  shall  be  signed  by  the  Secretary  of  the 
[nterior,  or  under  his  direction  by  one  of  the  Assistant 
Secretaries  of  the  Interior,  and  countersigned  by  the  Com- 
missioner of  Patents,  and  they  shall  be  recorded,  together 
with  the  specifications,  in  the  Patent  Office,  in  books  to 
be  kept  for  that  purpose." 
Approved  February  18,  1888. 

JUDICIARY   ACT   OF    1891  1 

26  Statutes  at  Large,  Page  826,  Chap.  517 

As  Amended  June  6,  1900 
31  Statutes  at  Large,  Page  660,  Chap.  803 

An  Act  to  establish  Circuit  Courts  of  Appeals,  and  to  de- 
fine and  regulate  in  certain  cases  the  jurisdiction  of 
the  Courts  of  the  United  States,  and  for  other  pur- 
poses . 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled, 

Section  6.  That  the  Circuit  Courts  of  Appeals,  es- 
tablished by  this  act,  shall  exercise  appellate  jurisdiction 
to  review  by  appeal  or  by  writ  of  error,  final  decisions  in 
the  District  Courts  and  the  existing  Circuit  Courts,  unless 
otherwise  provided  by  law,  and  the  judgments  or  decrees 
of  the  Circuit  Courts  of  Appeals  shall  be  final  in  all  cases 
arising  under  the  patent  laws,  excepting  that  in  every 
such  subject  within  its  appellate  jurisdiction,  the  Circuit 
Court  of  Appeals  at  any  time  may  certify  to  the  Supreme 
Court  of  the  United  States  any  questions  or  propositions 
of  law  concerning  which  it  desires  the  instruction  of  that 

1  The  parts  which  are  not  relevant  to  patent  cases  are  omitted. 


THE   JUDICIARY   ACT   OF    1891  075 

court  for  its  proper  decision.  And  thereupon  the  Supreme 
Court  may  either  give  its  instruction  on  the  questions  and 
propositions  certified  to  it,  which  shall  be  binding  upon  the 
Circuit  Courts  of  Appeals  in  such  case,  or  it  may  require 
that  the  whole  record  and  cause  may  be  sent  up  to  it  for 
its  consideration,  and  thereupon  shall  decide  the  whole 
matter  in  controversy  in  the  same  manner  as  if  it  had  been 
brought  there  for  review  by  writ  of  error  or  appeal. 
And  excepting  also  that  in  any  such  case  as  is  herein- 
before made  final  in  the  Circuit  Court  of  Appeals,  it  shall 
be  competent  for  the  Supreme  Court  to  require,  by  cer- 
tiorari or  otherwise,  any  such  case  to  be  certified  to  the 
Supreme  Court  for  its  review  and  determination,  with 
the  same  power  and  authority  in  the  case  as  if  it  had  been 
carried  by  appeal  or  writ  of  error  to  the  Supreme  Court. 

Section  7.  That  where,  upon  a  hearing  in  equity  in  a 
District  Court  or  in  a  Circuit  Court,  or  by  a  judge  thereof 
in  vacation,  an  injunction  shall  be  granted  or  continued, 
or  a  receiver  appointed,  by  an  interlocutory  order  or 
decree,  in  a  cause  in  which  an  appeal  from  a  final  decree 
may  be  taken  under  the  provisions  of  this  Act  to  the  Cir- 
cuit Court  of  Appeals,  an  appeal  may  be  taken  from  such 
interlocutory  order  or  decree,  granting,  or  continuing 
such  injunction,  or  appointing  such  receiver,  to  the  Cir- 
cuit Court  of  Appeals;  Provided,  That  the  appeal  must 
be  taken  within  thirty  days  from  the  entry  of  such  order 
or  decree,  and  it  shall  take  precedence  in  the  appellate 
court;  and  the  proceedings  in  other  respects  in  the  court 
below  shall  not  be  stayed,  unless  otherwise  ordered  by 
that  court  or  by  the  appellate  court  or  a  judge  thereof, 
during  the  pendency  of  such  appeal;  Provided  further, 
That  the  court  below  may  in  its  discretion  require  as  a 
condition  of  the  appeal,  an  additional  bond. 

Section  10.  And  whenever  on  appeal  or  writ  of  error 


97C  I'"  I     PATEN  I'   STATUTES 

or  otherwise,  a  case  coming  from  a  Circuit  Court  of  Ap- 
peals shall  be  reviewed  and  determined  in  the  Supreme 
( Jourl .  the  cause  Bhall  be  remanded  by  the  Supreme  Court 
to  the  proper  District  or  Circuit  Court,  for  further  pro- 
ceeding in  pursuance  of  such  determination.  Whenever 
(in  appeal  or  writ  of  error  or  otherwise  a  case  coming  from 
a  District  or  Circuit  Court  shall  be  reviewed  and  deter- 
mined in  the  ( Jircuit  Court  of  Appeals,  in  a  case  in  which 
the  decision  in  the  Circuit  Court  of  Appeals  is  final,  such 
cause  shall  be  remanded  to  the  said  District  or  Circuit 
Court,  for  further  proceedings  to  be  there  taken  in  pur- 
suance  of  such  determination. 

Skction  11.  That  no  appeal  or  writ  of  error  by  which 
any  order,  judgment,  or  decree  may  be  reviewed  in  the 
( Jircuit  Courts  of  Appeals  under  the  provisions  of  this  Act, 
shall  be  taken  or  sued  out  except  within  six  months  after 
the  entry  of  the  order,  judgment,  or  decree  sought  to 
be  reviewed.  And  all  provisions  of  law  now  in  force  regu- 
lating the  methods  and  system  of  review,  through  appeals 
or  writs  of  error,  shall  regulate  the  methods  and  system  of 
appeals  and  writs  of  error  provided  for  in  this  act  in  re- 
spect of  the  Circuit  Courts  of  Appeals,  including  all  pro- 
visions for  bonds  or  other  securities  to  be  required  and 
taken  on  such  appeals  and  writs  of  error,  and  any  judge  of 
the  Circuit  Courts  of  Appeals,  in  respect  of  cases  brought 
<  >r  to  be  brought  to  that  court,  shall  have  the  same  powers 
and  duties  as  to  the  allowance  of  appeals  or  writs  of  error, 
and  the  conditions  of  such  allowance,  as  now  by  law  be- 
long to  the  justices  or  judges  in  respect  of  the  existing 
courts  of  the  United  States  respectively. 

Section  14.  And  all  acts  and  parts  of  acts  relating  to 
appeals  or  writs  of  error  inconsistent  with  the  provisions 
for  review  by  appeals  or  writs  of  error  in  the  preceding 
sections  five  and  six  of  this  act  are  hereby  repealed. 


THE   JUDICIARY    ACT   OF.  1893  077 

Section  15.  That  the  Circuit  Court  of  Appeals  in 
cases  in  which  the  judgments  of  the  Circuit  Courts  of 
Appeals  are  made  final  by  this  act  shall  have  the  same  ap- 
pellate jurisdiction,  by  writ  of  error  or  appeal,  to  review 
the  judgments,  orders,  and  decrees  of  the  Supreme  Court e 
of  the  several  Territories  as  by  this  act  they  may  have 
to  review  the  judgments,  orders,  and  decrees  of  the  Dis- 
trict Courts  and  Circuit  Courts;  and  for  that  purpose  the 
several  Territories  shall,  by  order  of  the  Supreme  Court, 
to  be  made  from  time  to  time,  be  assigned  to  particular 
circuits. 

Approved  March  3,  1891. 

JUDICIARY  ACT  OF   1893  ' 

27  Statutes  at  Large,  Page  434,  Chap.  74 

An  Act  to  establish  a  Court  of  Appeals  for  the  District  of 
Columbia,  and  for  other  purposes 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled, 
That  there  shall  be,  and  there  is  hereby,  established  in 
the  District  of  Columbia  a  court,  to  be  known  as  the  Court 
of  Appeals  of  the  District  of  Columbia,  which  shall  con- 
sist of  one  chief  justice  and  two  associate  justices,  who  shall 
be  appointed  by  the  President,  by  and  with  the  advice  and 
consent  of  the  Senate,  and  shall  hold  office  during  good 
behavior. 

Section  7.  That  any  party  aggrieved  by  any  final 
order,  judgment,  or  decree  of  the  Supreme  Court  of  the 
District  of  Columbia,  or  of  any  justice  thereof,  may  ap- 
peal therefrom  to  the  Court  of  Appeals  hereby  created; 
1  All  parts  not  relevant  to  patent  law  are  omitted. 


978  THE    PATENT   STATUTES 

and  upon  such  appeal  the  Court  of  Appeals  shall  review 
such  order,  judgment,  or  decree,  and  affirm,  reverse,  or 
modify  the  Bame  as  shall  be  just.  Appeals  shall  also  be 
allowed  to  said  Court  of  Appeals  from  all  interlocutory 
orders  of  the  Supreme  Court  of  the  District  of  Columbia, 
or  by  any  justice  thereof,  whereby  the  possession  of  prop- 
erl  y  is  changed  or  affected,  such  as  orders  for  the  appoint- 
ment of  receivers,  granting  injunctions,  dissolving  writs 
of  attachment,  and  the  like;  and  also  from  any  other  inter- 
locutory order,  in  the  discretion  of  said  Court  of  Appeals, 
whenever  it  is  made  to  appear  to  said  court  upon  petition 
that  it  will  be  in  the  interest  of  justice  to  allow  such  ap- 
peal. 

Section  8.  That  any  final  judgment  or  decree  of  the 
said  Court  of  Appeals  may  be  re-examined  and  affirmed, 
reversed,  or  modified  by  the  Supreme  Court  of  the  United 
States,  upon  writ  of  error  or  appeal,  in  all  causes  in  which 
the  matter  in  dispute,  exclusive  of  costs,  shall  exceed  the 
sum  of  five  thousand  dollars,  in  the  same  manner  and 
under  the  same  regulations  as  heretofore  provided  for  in 
cases  of  writs  of  error  on  judgment  or  appeals  from  decrees 
rendered  in  the  Supreme  Court  of  the  District  of  Columbia; 
and  also  in  cases,  without  regard  to  the  sum  or  value  of  the 
matter  in  dispute,  wherein  is  involved  the  validity  of  any 
patent  or  copyright,  or  in  which  is  drawn  in  question  the 
validity  of  a  treaty  or  statute  of  or  an  authority  exercised 
under  the  United  States. 

Section  9.  That  the  determination  of  appeals  from  the 
decision  of  the  Commissioner  of  Patents,  now  vested  in  the 
general  term  of  the  Supreme  Court  of  the  District  of 
Columbia,  in  pursuance  of  the  provisions  of  section  seven 
hundred  and  eighty  of  the  Revised  Statutes  of  the  United 
States,  relating  to  the  District  of  Columbia,  shall  hereafter 
be  and  the  same  is  hereby  vested  in  the  Court  of  Appeals 


THE   JURISDICTION   ACT   OF    1897  979 

created  by  this  act;  and  in  addition,  any  party  aggrieved 
by  a  decision  of  the  Commissioner  of  Patents  in  any  inter- 
ference case  may  appeal  therefrom  to  said  Court  of  Ap- 
peals. 
Approved  February  9,  1893. 

JURISDICTION  ACT  OF  1897 

29  Statutes  at  Large,  Page  695,  Chap.  395 

An  Act  Denning  the  jurisdiction  of  the  United  States  Cir- 
cuit Courts  in  cases  brought  for  the  infringement  of 
letters  patent 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled, 
That  in  suits  brought  for  the  infringement  of  letters  patent 
the  Circuit  Courts  of  the  United  States  shall  have  juris- 
diction, in  law  or  in  equity,  in  the  district  of  which  the 
defendant  is  an  inhabitant,  or  in  any  district  in  which  the 
defendant,  whether  a  person,  partnership,  or  corporation, 
shall  have  committed  acts  of  infringement  and  have  a 
regular  and  established  place  of  business.  If  such  suit  is 
brought  in  a  district  of  which  the  defendant  is  not  an 
inhabitant,  but  in  which  such  defendant  has  a  regular 
and  established  place  of  business,  service  of  process, 
summons,  or  subpoena  upon  the  defendant  may  be  made 
by  service  upon  the  agent  or  agents  engaged  in  conduct- 
ing such  business  in  the  district  in  which  suit  is  brought. 

Approved  March  3,  1897. 


mmi  THE    i'\  PENT   STATUTES 

PATENT  ACT  OF  1897 
29  Statutes  at  Large,  Page  692,  Chap.  391 

An  Art   Revising  and  amending  the  statutes  relating  to 

patents 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled,  That 
section  forty-eight  hundred  and  eighty-six  of  the  Revised 
Statutes  be,  and  the  same  hereby  is,  amended  by  inserting 
on  line  four,  after  the  word  " country,"  the  words  "before 
his  invention  or  discovery  thereof, "  and  on  line  five,  after 
the  word  "thereof,"  the  words  "or  more  than  two  years 
prior  to  his  application,"  so  that  the  clause  so  amended 
will  read  as  follows: 

Section  4886.  Any  person  who  has  invented  or  discov- 
ered any  new  and  useful  art,  machine,  manufacture,  or 
composition  of  matter,  or  any  new  and  useful  improve- 
ments thereof,  not  known  or  used  by  others  in  this  country, 
before  his  invention  or  discovery  thereof,  and  not  patented 
or  described  in  any  printed  publication  in  this  or  any 
foreign  country,  before  his  invention  or  discovery  thereof, 
or  more  than  two  years  prior  to  his  application,  and  not 
in  public  use  or  on  sale  in  this  country  for  more  than  two 
years  prior  to  his  application,  unless  the  same  is  proved  to 
have  been  abandoned,  may,  upon  payment  of  the  fees 
required  by  law,  and  other  due  proceeding  had,  obtain  a 
patent  therefor." 

Section  2.  That  section  forty-nine  hundred  and  twenty 
of  the  Revised  Statutes  be,  and  the  same  hereby  is, 
amended  by  adding  to  the  third  clause  of  said  section 
after  "thereof"  and  before  "or"  the  following  words: 


THE    PATENT   ACT   OF    1897  9<8l 

"or  more  than  two  years  prior  to  his  application  for  a 
patent  therefor,"  so  that  the  section  so  amended  will 
read  as  follows: 

"  Section  4920.  In  any  action  for  infringement  the  de- 
fendant may  plead  the  general  issue,  and,  having  given 
notice  in  writing  to  the  plaintiff  or  his  attorney  thirty 
days  before,  may  prove  on  trial  any  one  or  more  of  the 
following  special  matters: 

"  First.  That  for  the  purpose  of  deceiving  the  public  the 
description  and  specification  filed  by  the  patentee  in  the 
Patent  Office  was  made  to  contain  less  than  the  whole 
truth  relative  to  his  invention  or  discovery,  or  more  than 
is  necessary  to  produce  the  desired  effect;  or, 

"Second.  That  he  had  surreptitiously  or  unjustly 
obtained  the  patent  for  that  which  was  in  fact  invented 
by  another,  who  was  using  reasonable  diligence  in  adapt- 
ing and  perfecting  the  same;  or, 

"Third.  That  it  has  been  patented  or  described  in 
some  printed  publication  prior  to  his  supposed  invention 
or  discovery  thereof,  or  more  than  two  years  prior  to  his 
application  for  a  patent  therefor;  or, 

"Fourth.  That  he  was  not  the  original  and  first  inventor 
or  discoverer  of  any  material  and  substantial  part  of  the 
thing  patented;  or, 

"Fifth.  That  it  had  been  in  public  use  or  on  sale 
in  this  country  for '  more  than  two  years  before  his 
application  for  a  patent,  or  had  been  abandoned  to  the 
public. 

"And  in  notices  as  to  proof  of  previous  invention,  knowl- 
edge, or  use  of  the  thing  patented,  the  defendant  shall  state 
the  names  of  the  patentees  and  the  dates  of  their  patents, 
and  when  granted,  and  the  names  and  residences  of  the 
persons  alleged  to  have  invented  or  to  have  had  the  prior 
knowledge  of  the  thing  patented,  and  where  and  by  whom 


982  THE    PATENT   STATUTES 

it  had  been  used;  and  if  any  one  or  more  of  the  special 
matters  alleged  shall  be  found  for  the  defendant,  judg- 
ment shall  1)0  rendered  for  him  with  costs.  And  the  like 
defenses  may  be  pleaded  in  any  suit  in  equity  for  relief 
against  an  alleged  infringement;  and  proofs  of  the  same 
may  be  given  upon  like  notice  in  the  answer  of  the  de- 
fendant, and  with  the  like  effect." 

Section  3.  That  section  forty-eight  hundred  and  eighty- 
seven  of  the  Revised  Statutes  be,  and  the  same  hereby  is, 
amended  by  inserting  on  line  one,  after  the  words  "no 
person,"  the  words  "otherwise  entitled  thereto,"  and  on 
line  three,  after  the  words  "caused  to  be  patented,"  the 
words  "by  the  inventor  or  his  legal  representatives  or 
assigns,"  and  by  erasing  therein  all  that  portion  of  the 
section  which  follows  the  words  "in  a  foreign  country," 
on  lines  three  and  four,  and  substituting  in  lieu  thereof  the 
following:  "unless  the  application  for  said  foreign  patent 
was  filed  more  than  seven  months  prior  to  the  filing  of  the 
application  in  this  country,  in  which  case  no  patent  shall 
be  granted  in  this  country"  so  that  the  section  so  amended 
will  read  as  follows: 

"Section  4887.  No  person  otherwise  entitled  thereto 
shall  be  debarred  from  receiving  a  patent  for  his  invention 
or  discovery,  nor  shall  any  patent  be  declared  invalid,  by 
reason  of  its  having  been  first  patented  or  caused  to  be 
patented  by  the  inventor  or  his  legal  representatives  or 
assigns  in  a  foreign  country,  unless  the  application  for 
said  foreign  patent  was  filed  more  than  seven  months  prior 
to  the  filing  of  the  appli  cation  in  this  country,  in  which 
case  no  patent  shall  be  granted  in  this  country." 

Section  4.  That  section  forty-eight  hundred  and 
ninety-four  of  the  Revised  Statutes  be,  and  the  same 
hereby  is,  amended  by  striking  out  the  words  "two  years" 
in  every  place  where  they  occur  and  substituting  in  lieu 


THE  PATENT  ACT  OF  1897  983 

thereof  the  words  "one  year,"  so  that  the  section  so 
amended  will  read  as  follows: 

"  Section  4894.  All  applications  for  patents  shall  be 
completed  and  prepared  for  examination  within  one  year 
after  the  filing  of  the  application,  and  in  default  thereof, 
or  upon  failure  of  the  applicant  to  prosecute  the  same 
within  one  year  after  any  action  therein,  of  which  notice 
shall  have  been  given  to  the  applicant,  they  shall  be  re- 
garded as  abandoned  by  the  parties  thereto,  unless  it  be 
shown  to  the  satisfaction  of  the  Commissioner  of  Patents 
that  such  delay  was  unavoidable." 

Section  5.  That  section  forty-eight  hundred  and 
ninety-eight  of  the  Revised  Statutes  be,  and  the  same 
hereby  is,  amended  by  adding  thereto  the  following 
sentence : 

"If  any  such  assignment,  grant,  or  conveyance  of  any 
patent  shall  be  acknowledged  before  any  notary  public  of 
the  several  States  or  Territories  or  the  District  of  Colum- 
bia, or  any  commissioner  of  the  United  States  circuit 
court,  or  before  any  secretary  of  legation  or  consular 
officer  authorized  to  administer  oaths  or  perform  notarial 
acts  under  section  seventeen  hundred  and  fifty  of  the 
Revised  Statutes,  the  certificate  of  such  acknowledgment, 
under  the  hand  and  official  seal  of  such  notary  or  other 
officer,  shall  be  prima  facie  evidence  of  the  execution  of 
such  assignment,  grant,  or  conveyance,"  so  that  the 
section  so  amended  will  read  as  follows: 

"Section  4898.  Every  patent  or  any  interest  therein 
shall  be  assignable  in  law  by  an  instrument  in  writing,  and 
the  patentee  or  his  assigns  or  legal  representatives  may  in 
like  manner  grant  and  convey  an  exclusive  right  under  his 
patent  to  the  whole  or  any  specified  part  of  the  United 
States.  An  assignment,  grant,  or  conveyance  shall  be  void 
as  against  any  subsequent  purchaser  or  mortgagee  for  a 


•is  I  THE    PATENT    STATUTES 

valuable  consideration,  without  notice,  unless  it  is  re- 
corded in  the  Patent  Office  within  three  months  from  the 
date  thereof. 

"  If  any  such  assignment,  grant,  or  conveyance  of  any 
patent  shall  be  acknowledged  before  any  notary  public 
of  the  several  States  or  Territories  or  the  District  of  Colum- 
bia, or  any  commissioner  of  the  United  States  circuit 
court,  or  before  any  secretary  of  legation  or  consular  officer 
authorized  to  administer  oaths  or  perform  notarial  acts 
under  section  seventeen  hundred  and  fifty  of  the  Revised 
Statutes,  the  certificate  of  such  acknowledgment,  under 
the  hand  and  official  seal  of  such  notary  or  other  officer, 
shall  be  prima  facie  evidence  of  the  execution  of  such 
assignment,  grant,  or  conveyance." 

Section  6.  That  section  forty-nine  hundred  and 
twenty-one  of  the  Revised  Statutes  be,  and  the  same 
hereby  is,  amended  by  adding  thereto  the  following 
sentence: 

"But  in  any  suit  or  action  brought  for  the  infringement 
of  any  patent  there  shall  be  no  recovery  of  profits  or 
damages  for  any  infringement  committed  more  than  six 
years  before  the  filing  of  the  bill  of  complaint  or  the 
issuing  of  the  writ  in  such  suit  or  action,  and  this  provision 
shall  apply  to  existing  causes  of  action,"  so  that  the  sec- 
tion so  amended  will  read  as  follows: 

"Section  4921.  The  several  courts  vested  with  juris- 
diction of  cases  arising  under  the  patent  laws  shall  have 
power  to  grant  injunctions  according  to  the  course  and 
principles  of  courts  of  equity,  to  prevent  the  violation  of 
any  right  secured  by  patent,  on  such  terms  as  the  court 
may  deem  reasonable;  and  upon  a  decree  being  rendered 
in  any  such  case  for  an  infringement  the  complainant 
shall  be  entitled  to  recover,  in  addition  to  the  profits  to  be 
accounted  for  by  the  defendant,  the  damages  the  complain- 


THE  PATENT  ACT  OF  1897  985 

ant  has  sustained  thereby;  and  the  court  shall  assess  the 
same  or  cause  the  same  to  be  assessed  under  its  direction. 
And  the  court  shall  [have]  the  same  power  to  increase  such 
damages,  in  its  discretion,  as  is  given  to  increase  the  dam- 
ages found  by  verdicts  in  actions  in  the  nature  of  actions 
of  trespass  upon  the  case. 

"But  in  any  suit  or  action  brought  for  the  infringement 
of  any  patent  there  shall  be  no  recovery  of  profits  or  dam- 
ages for  any  infringement  committed  more  than  six  years 
before  the  filing  of  the  bill  of  complaint  or  the  issuing  of 
the  writ  in  such  suit  or  action,  and  this  provision  shall 
apply  to  existing  causes  of  action." 

Section  7.  That  in  every  case  where  the  head  of  any 
Department  of  the  Government  shall  request  the  Com- 
missioner of  Patents  to  expedite  the  consideration  of  an 
application  for  a  patent  it  shall  be  the  duty  of  such  head 
of  a  Department  to  be  represented  before  the  Commis- 
sioner in  order  to  prevent  the  improper  issue  of  a  patent. 

Section  8.  That  this  Act  shall  take  effect  January  first, 
eighteen  hundred  and  ninety-eight,  and  sections  one,  two, 
three,  and  four,  amending  sections  forty-eight  hundred 
and  eighty-six,  forty-nine  hundred  and  twenty,  forty- 
eight  hundred  and  eighty-seven,  and  forty-eight  hundred 
and  ninety-four  of  the  Revised  Statutes,  shall  not  apply 
to  any  patent  granted  prior  to  said  date,  nor  to  any  ap- 
plication filed  prior  to  said  date,  nor  to  any  patent  granted 
on  such  an  application. 

Approved  March  3,  1897. 


986  THE    PATENT   STATUTES 

PATENT  ACT  OF  1899 

30  Statutes  at  Large,  Page  915,  Chap.  227 

An  Act  to  amend  section  forty-eight  hundred  and  ninety- 
six  of  the  Revised  Statutes 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled,  That 
section  forty-eight  hundred  and  ninety-six  of  the  Re- 
vised Statutes  is  hereby  amended  by  inserting  after  the 
words  "in  his  lifetime"  the  following  words:  "and  when 
any  person  having  made  any  new  invention  or  discovery 
for  which  a  patent  might  have  been  granted  becomes 
insane  before  a  patent  is  granted,  the  right  of  applying 
for  and  obtaining  the  patent  shall  devolve  upon  his  legally 
appointed  guardian,  conservator,  or  representative  in 
trust  for  his  estate,  in  as  full  manner  and  on  the  same 
terms  and  conditions  as  the  same  might  have  been  claimed 
or  enjoyed  by  him  while  sane;"  and  by  inserting  at  the 
end  of  said  section  the  following  words:  "The  foregoing 
section,  as  to  insane  persons,  is  to  cover  all  applications 
now  on  file  in  the  Patent  Office  or  which  may  be  hereafter 
made,"  so  that  the  said  section  as  amended  will  read  as 
follows: 

"Section  4896.  When  any  person,  having  made  any 
new  invention  or  discovery  for  which  a  patent  might  have 
been  granted,  dies  before  a  patent  is  granted,  the  right  of 
applying  for  and  obtaining  the  patent  shall  devolve  on  his 
executor  or  administrator,  in  trust  for  the  heirs  at  law  of 
the  deceased,  in  case  he  shall  have  died  intestate;  or  if  he 
shall  have  left  a  will,  disposing  of  the  same,  then  in  trust 
for  his  devisees  in  as  full  manner  and  on  the  same  terms 


THE  PATENT  ACT  OF  1902  987 

and  conditions  as  the  same  might  have  been  claimed  or 
enjoyed  by  him  in  his  lifetime;  and  when  any  person  hav- 
ing made  any  new  invention  or  discovery  for  which  a 
patent  might  have  been  granted  becomes  insane  before 
a  patent  is  granted,  the  right  of  applying  for  and  obtain- 
ing the  patent  shall  devolve  on  his  legally  appointed  guard- 
ian, conservator,  or  representative  in  trust  for  his  estate, 
in  as  full  manner  and  on  the  same  terms  and  conditions 
as  the  same  might  have  been  claimed  or  enjoyed  by  him 
while  sane;  and  when  the  application  is  made  by  such 
legal  representatives,  the  oath  or  affirmation  required  to 
be  made  shall  be  so  varied  in  form  that  it  can  be  made  by 
them. 

"The  foregoing  section,  as  to  insane  persons,  is  to  cover 
all  applications  now  on  file  in  the  Patent  Office  or  which 
may  be  hereafter  made." 

Approved  February  28,  1899. 

PATENT  ACT  OF  APRIL,  1902 

32  Statutes  at  Large,  Page  95,  Chap.  417 

An  Act  to  amend  section  forty-eight  hundred  and  eighty- 
three  of  the  Revised  Statutes,  relating  to  the  signing 
of  letters  patent  for  inventions 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled,  That 
section  forty-eight  hundred  and  eighty-three  of  the  Re- 
vised Statutes  be,,  and  is  hereby,  amended  so  as  to  read 
as  follows: 

"  Section  4883.  All  patents  shall  be  issued  in  the  name 
of  the  United  States  of  America,  under  the  seal  of  the 
Patent  Office,  and  shall  be  signed  by  the  Commissioner  of 


988  THE    PATENT   STATUTES 

Talents,  and  they  shall  be  recorded,  together  with  the 
specifications;  in  the  Patent  Office  in  books  to  be  kept  for 
that  purpose." 

Approved  April  11,  1902. 


PATENT  ACT  OF  MAY,  1902 

32  Statutes  at  Large,  Page  193,  Chap.  783 

An  Act  to  amend  section  forty-nine  hundred  and  twenty- 
nine  of  the  Revised  Statutes,  relating  to  design  patents 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled,  That 
section  forty-nine  hundred  and  twenty-nine  of  the  Re- 
vised Statutes  be,  and  the  same  is  hereby,  amended  so  as 
to  read  as  follows: 

"Section  4929.  Any  person  who  has  invented  any  new, 
original,  and  ornamental  design  for  an  article  of  manufac- 
ture, not  known  or  used  by  others  in  this  country  before 
his  invention  thereof,  and  not  patented  or  described  in  any 
printed  publication  in  this  or  any  foreign  country  before 
his  invention  thereof,  or  more  than  two  years  prior  to  his 
application,  and  not  in  public  use  or  on  sale  in  this  country 
for  more  than  two  years  prior  to  his  application,  unless 
the  same  is  proved  to  have  been  abandoned,  may,  upon 
payment  of  the  fees  required  by  law  and  other  due  pro- 
ceedings had,  the  same  as  in  cases  of  inventions  or  dis- 
coveries covered  by  section  forty-eight  hundred  and  eighty- 
six,  obtain  a  patent  therefor." 

Approved  May  9,  1902. 


THE  PATENT  ACT  OF  1903  989 

PATENT  ACT  OF  1903 

32  Statutes  at  Large,  Page  1225,  Chap.  1019 

An  Act  to  effectuate  the  provisions  of  the  additional  act 
of  the  international  convention  for  the  protection  of 
industrial  property. 

Be  it  enacted  by  the  Senate  and  House  of  Representatives  of 
the  United  States  of  America  in  Congress  assembled,  That 
section  forty-eight  hundred  and  eighty-seven  of  the  Re- 
vised Statutes  is  amended  by  changing  the  word  " seven" 
to  "twelve,"  and  by  inserting  after  the  word  "months" 
the  words  "in  cases  within  the  provisions  of  section  forty- 
eight  hundred  and  eighty-six  of  the  Revised  Statutes,  and 
four  months,  in  cases  of  designs,"  and  by  adding  the 
following  words:  "An  application  for  patent  for  an  inven- 
tion or  discovery  or  for  a  design  filed  in  this  country  by , 
any  person  who  has  previously  regularly  filed  an  appli- 
cation for  a  patent  for  the  same  invention,  discovery,  or 
design  in  the  foreign  country  which,  by  treaty,  convention, 
or  law,  affords  similar  privileges  to  citizens  of  the  United 
States  shall  have  the  same  force  and  effect  as  the  same 
application  would  have  if  filed  in  this  country  on  the  date 
on  which  the  application  for  patent  for  the  same  inven- 
tion, discovery,  or  design  was  first  filed  in  such  foreign 
country,  provided  the  application  in  this  country  is  filed 
within  twelve  months  in  cases  within  the  provisions  of 
section  forty-eight  hundred  and  eighty-six  of  the  Re- 
vised Statutes,  and  within  four  months  in  cases  of  de- 
signs, from  the  earliest  date  on  which  any  such  foreign 
application  was  filed.  But  no  patent  shall  be  granted  on 
an  application  for  patent  for  an  invention  or  discovery  or 


<)<)()  THE    PATENT   STATUTES 

a  design  which  had  been  patented  or  described  in  a  printed 
publication  in  this  or  any  foreign  country  more  than  two 
years  before  the  date  of  the  actual  filing  of  the  applica- 
t  ion  in  this  country,  or  which  had  been  in  public  use,  or  on 
sale  in  this  country  for  more  than  two  years  prior  to  such 
filing;"  so  that  the  section  so  amended  shall  read: 

"Section  4887.  No  person  otherwise  entitled  thereto 
shall  be  debarred  from  receiving  a  patent  for  his  invention 
or  discovery,  nor  shall  any  patent  be  declared  invalid  by 
reason  of  its  having  been  first  patented  or  caused  to  be 
patented  by  the  inventor  or  his  legal  representatives  or 
assigns  in  a  foreign  country,  unless  the  application  for  said 
foreign  patent  was  filed  more  than  twelve  months,  in  cases 
within  the  provisions  of  section  forty-eight  hundred  and 
eighty-six  of  the  Revised  Statutes,  and  four  months  in 
cases  of  designs,  prior  to  the  filing  of  the  application  in 
this  country,  in  which  case  no  patent  shall  be  granted  in 
this  country. 

"An  application  for  patent  for  an  invention  or  discovery 
or  for  a  design  filed  in  this  country  by  any  person  who  has 
previously  regularly  filed  an  application  for  a  patent  for 
the  same  invention,  discovery,  or  design  in  a  foreign  coun- 
try which,  by  treaty,  convention,  or  law,  affords  similar 
privileges  to  citizens  of  the  United  States  shall  have  the 
same  force  and  effect  as  the  same  application  would  have 
if  filed  in  this  country  on  the  date  on  which  the  applica- 
tion for  patent  for  the  same  invention,  discovery,  or  de- 
sign was  first  filed  in  such  foreign  country,  provided  the 
application  in  this  country  is  filed  within  twelve  months 
in  cases  within  the  provisions  of  section  forty-eight  hun- 
dred and  eighty-six  of  the  Revised  Statutes,  and  within 
four  months  in  cases  of  designs,  from  the  earliest  date 
on  which  any  such  foreign  application  was  filed.  But  no 
patent  shall  be  granted  on  an  application  for  patent  for 


THE  PATENT  ACT  OF  1903  991 

an  invention  or  discovery  or  a  design  which  had  been 
patented  or  described  in  a  printed  publication  in  this  or 
any  foreign  country  more  than  two  years  before  the  date 
of  the  actual  filing  of  the  application  in  this  country,  or 
which  had  been  in  public  use  or  on  sale  in  this  country 
for  more  than  two  years  prior  to  such  filing." 

Section  2.  That  section  forty-eight  hundred  and 
ninety-two  of  the  Revised  Statutes  is  amended  by  insert- 
ing after  the  words  "notary  public"  the  words  " judge  or 
magistrate  having  an  official  seal  and  authorized  to  ad- 
minister oaths,"  and  by  adding  at  the  end  thereof  the 
words  "whose  authority  shall  be  proved  by  certificate  of  a 
diplomatic  or  consular  officer  of  the  United  States;"  so 
that  the  section  so  amended  shall  read : 

"Section  4892.  The  applicant  shall  make  oath  that  he 
does  verily  believe  himself  to  be  the  original  and  first  in- 
ventor or  discoverer  of  the  art,  machine,  manufacture, 
composition,  or  improvement  for  which  he  solicits  a  pat- 
ent; that  he  does  not  know  and  does  not  believe  that  the 
same  was  ever  before  known  or  used;  and  shall  state  of 
what  country  he  is  a  citizen.  Such  oath  may  be  made 
before  any  person  within  the  United  States  authorized 
by  law  to  administer  oaths,  or,  when  the  applicant  resides 
in  a  foreign  country,  before  any  minister,  charge  d'affaires, 
consul,  or  commercial  agent  holding  commission  under  the 
Government  of  the  United  States,  or  before  any  notary 
public,  judge,  or  magistrate  having  an  official  seal  and 
authorized  to  administer  oaths  in  the  foreign  country  in 
which  the  applicant  may  be,  whose  authority  shall  be 
proved  by  certificate  of  a  diplomatic  or  consular  officer 
of  the  United  States." 

Section  3.  That  section  forty-eight  hundred  and 
ninety-six  of  the  Revised  Statutes  is  amended  by  adding 
thereto  the  following  sentence:  "The  executor  or  adminis- 


992  THE    PATENT   STATUTES 

trator  duly  authorized  under  the  law  of  any  foreign  coun- 
1 1  \  to  administer  upon  the  estate  of  the  deceased  inventor 
shall,  in  case  the  said  inventor  was  not  domiciled  in  the 
United  States  at  the  time  of  his  death,  have  the  right  to 
apply  for  and  obtain  the  patent.  The  authority  of  such 
foreign  executor  or  administrator  shall  be  proved  by  cer- 
tificate of  a  diplomatic  or  consular  officer  of  the  United 
States;"  so  that  the  seetion  so  amended  shall  read  as 
follows : 

''Section  4896.  When  any  person,  having  made  any 
new  invention  or  discovery  for  which  a  patent  might  have 
been  granted,  dies  before  patent  is  granted,  the  right  of 
applying  for  and  obtaining  the  patent  shall  devolve  on  his 
executor  or  administrator,  in  trust  for  the  heirs  at  law  of 
the  deceased,  in  case  he  shall  have  died  intestate;  or  if 
he  shall  have  left  a  will  disposing  of  the  same,  then  in  trust 
for  his  devisees,  in  as  full  manner  and  on  the  same  terms 
and  conditions  as  the  same  might  have  been  claimed  or 
enjoyed  by  him  in  his  lifetime;  and  when  the  application 
is  made  by  such  legal  representatives,  the  oath  or  affirma- 
tion required  to  be  made  shall  be  so  varied  in  form  that  it 
can  be  made  by  them.  The  executor  or  administrator 
duly  authorized  under  the  law  of  any  foreign  country  to 
administer  upon  the  estate  of  the  deceased  inventor  shall, 
in  case  the  said  inventor  was  not  domiciled  in  the  United 
States  at  the  time  of  his  death,  have  the  right  to  apply 
for  and  obtain  the  patent.  The  authority  of  such 
foreign  executor  or  administrator  shall  be  proved  by 
certificate  of  a  diplomatic  or  consular  officer  of  the  United 
States." 

Section  4.  That  section  forty-nine  hundred  and  two 
is  amended  by  striking  out  the  words  "citizen  of  the 
United  States"  in  the  first  line  thereof,  and  substituting 
the  word  "person"  in  place  thereof,  and  by  striking  out 


THE    PATENT   ACT    OF    1908  993 

the  last  clause  of  said  section;  so  that  this  section  so 
amended  shall  read  as  follows: 

"Section  4902.  Any  person  who  makes  any  new  inven- 
tion or  discovery  and  desires  further  time  to  mature  the 
same  may,  on  payment  of  the  fees  required  by  law,  file  in 
the  Patent  Office  a  caveat  setting  forth  the  design  thereof 
and  of  its  distinguishing  characteristics  and  praying  pro- 
tection of  his  right  until  he  shall  have  matured  his  inven- 
tion. Such  caveat  shall  be  filed  in  the  confidential  archives 
of  the  office  and  preserved  in  secrecy,  and  shall  be  opera- 
tive for  the  term  of  one  year  from  the  filing  thereof;  and 
if  application  is  made  within  the  year  by  any  other  person 
for  a  patent  with  which  such  caveat  would  in  any  manner 
interfere,  the  Commissioner  shall  deposit  the  description, 
specification,  drawings,  and  model  of  such  application  in 
like  manner  in  the  confidential  archives  of  the  office  and 
give  notice  thereof  by  mail  to  the  person  by  whom  the 
caveat  was  filed.  If  such  person  desires  to  avail  himself 
of  his  caveat  he  shall  file  his  descriptions,  specifications, 
drawings,  and  model  within  three  months  from  the  time 
of  placing  the  notice  in  the  post-office  in  Washington,  with 
the  usual  time  required  for  transmitting  it  to  the  caveator 
added  thereto,  which  time  shall  be  indorsed  on  the  no- 
tice." 

Approved  March  3,  1903. 

Theodore  Roosevelt. 

PATENT   ACT   OF   MAY  23,    1908 

35  Statutes  at  Large,  245 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled, 
That  section  forty-eight  hundred  and  ninety-six  of  the 


994  THE    PATENT   STATUTES 

Revised  Statutes  be,  and  the  same  is  hereby,  amended 
so  that  the  section  shall  read  as  follows : 

"Section  4896.  When  any  person,  having  made  any 
new  invention  or  discovery  for  which  a  patent  might  have 
been  granted,  dies  before  a  patent  is  granted,  the  right  of 
applying  for  and  obtaining  the  patent  shall  devolve  on  his 
executor  or  administrator,  in  trust  for  the  heirs  at  law 
of  the  deceased  in  case  he  shall  have  died  intestate, 
or  if  he  shall  have  left  a  will  disposing  of  the  same,  then  in 
trust  for  his  devisees  in  as  full  manner  and  on  the  same 
terms  and  conditions  as  the  same  might  have  been  claimed 
or  enjoyed  by  him  in  his  lifetime;  and  when  any  person 
having  made  any  new  invention  or  discovery  for  which  a 
patent  might  have  been  granted  becomes  insane  before 
a  patent  is  granted,  the  right  of  applying  for  and  obtaining 
the  patent  shall  devolve  on  his  legally  appointed  guardian, 
conservator,  or  representative  in  trust  for  his  estate  in  as 
full  manner  and  on  the  same  terms  and  conditions  as  the 
same  might  have  been  claimed  or  enjoyed  by  him  while 
sane;  and  when  the  application  is  made  by  such  legal 
representatives  the  oath  or  affirmation  required  to  be 
made  shall  be  so  varied  in  form  that  it  can  be  made  by 
them.  The  executor  or  administrator  duly  authorized 
under  the  law  of  any  foreign  country  to  administer  upon 
the  estate  of  the  deceased  inventor,  shall,  in  case  the  said 
inventor  was  not  domiciled  in  the  United  States  at  the 
time  of  his  death,  have  the  right  to  apply  for  and  obtain 
the  patent.  The  authority  of  such  foreign  executor  or 
administrator  shall  be  proved  by  certificate  of  a  diplo- 
matic or  consular  officer  of  the  United  States. 

"The  foregoing  section,  as  to  insane  persons,  is  to  cover 
all  applications  now  on  file  in  the  Patent  Office  or  which 
may  be  hereafter  made." 

Appkoved  May  23,  1908. 


THE  PATENT  ACT  OF  1909  995 

PATENT  ACT  OF  MAY  23,    1908 

35  Statutes  at  Large,  246 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  tJie  United  States  of  America  in  Congress  assembled, 
That  section  forty-eight  hundred  and  eighty-five  of 
the  Revised  Statutes  be,  and  the  same  hereby  is, 
amended  to  read  as  follows : 

"Section  4885.  Every  patent  shall  issue  within  a  period 
of  three  months  from  the  date  of  the  payment  of  the  final 
fee,  which  fee  shall  be  paid  not  later  than  six  months 
from  the  time  at  which  the  application  was  passed  and 
allowed  and  notice  thereof  was  sent  to  the  applicant  or 
his  agent;  and  if  the  final  fee  is  not  paid  within  that 
period  the  patent  shall  be  withheld." 

Approved  May  23,  1908. 

PATENT  ACT  OF  MARCH  4,    1909 

36  Statutes  at  Large,  1094 

Forging  etc.  letters  patent. 

Section  27.  Whoever  shall  falsely  make,  forge,  counter- 
feit, or  alter  any  letters  patent  granted  or  purporting  to 
have  been  granted  by  the  President  of  the  United  States; 
or  whoever  shall  pass,  utter  or  publish  as  genuine  any  such 
forged,  counterfeited,  or  falsely  altered  letters  patent, 
knowing  the  same  to  be  forged,  counterfeited  or  falsely 
altered,  shall  be  fined  not  more  than  five  thousand  dollars 
and  imprisoned  not  more  than  ten  years. 


996  THE    PATENT    STATUTES 

COURT  OF  CLAIMS  ACT  OF  JUNE  25,  1910 

36  Statutes  at  Large,  851 

An   Act  to  provide  additional  protection  for  owners  of 
patents  of  the  United  States,  and  for  other  purposes 

Be  it  enacted,  etc.,  That  whenever  an  invention  de- 
scribed in  and  covered  by  a  patent  of  the  United  States 
shall  hereafter  be  used  by  the  United  States  without  li- 
cense of  the  owner  thereof  or  lawful  right  to  use  the  same, 
such  owner  may  recover  reasonable  compensation  for 
such  use  by  suit  in  the  Court  of  Claims :  Provided,  however, 
That  said  Court  of  Claims  shall  not  entertain  a  suit  or 
reward  compensation  under  the  provisions  of  this  Act 
where  the  claim  for  compensation  is  based  on  the  use  by 
the  United  States  of  any  article  heretofore  owned,  leased, 
used  by,  or  in  the  possession  of  the  United  States:  Pro- 
vided further,  That  in  any  such  suit  the  United  States 
may  avail  itself  of  any  and  all  defences,  general  or  special, 
winch  might  be  pleaded  by  a  defendant  in  an  action  for 
infringement,  as  set  forth  in  Title  Sixty  of  the  Revised 
Statutes,  or  otherwise:  And  provided  further,  That  the 
benefits  of  this  Act  shall  not  inure  to  any  patentee,  who, 
when  he  makes  such  claim  is  in  the  employment  or  service 
of  the  Government  of  the  United  States;  or  the  assignee 
of  any  such  patentee;  nor  shall  this  Act  apply  to  any  de- 
vice discovered  or  invented  by  such  employee  during  the 
time  of  his  employment  or  service. 

Approved  June  25,  1910. 


THE    PATENT   ACT   OF    1915  99*3 

PATENT  ACT  OF  JULY   16,    1914 
38  Statutes  at  Large,  491 

Duties  of  Assistant  Commissio7iers. 

The  First  Assistant  Commissioner  of  Patents  and  the 
Assistant  Commissioner  of  Patents  shall  hereafter  per- 
form such  duties  pertaining  to  the  office  of  Commissioner 
of  Patents  as  may  be  assigned  to  them,  respectively,  from 
time  to  time,  by  the  Commissioner  of  Patents. 

PATENT   ACT  OF   MARCH   3,    1915 

38  Statutes  at  Large,  958 

(R.  S.,  §  4888,  as  amended,  Act  March  3,  1915,  c.  94, 
Sec.  1.)  Requisites  of  application,  description,  specifica- 
tion, and  claim. 

Before  any  inventor  or  discoverer  shall  receive  a  patent 
for  his  invention  or  discovery,  he  shall  make  application 
therefor,  in  writing,  to  the  Commissioner  of  Patents, 
and  shall  file  in  the  Patent  Office  a  written  description  of 
the  same,  and  of  the  manner  and  process  of  making,  con- 
structing, compounding,  and  using  it,  in  such  full,  clear, 
concise,  and  exact  terms  as  to  enable  any  person  skilled 
in  the  art  or  science  to  which  it  appertains,  or  with  which 
it  is  most  nearly  connected,  to  make,  construct,  compound, 
and  use  the  same;  and  in  case  of  a  machine,  he  shall  ex- 
plain the  principle  thereof,  and  the  best  mode  in  which  he 
has  contemplated  applying  that  principle,  so  as  to  dis- 
tinguish it  from  other  inventions ;  and  he  shall  particularly 
point  out  and  distinctly  claim  the  part,  improvement, 
or  combination  which  he  claims  as  his  invention  or  dis- 


998  THE    PATENT   STATUTES 

covery.  The  specification  and  claim  shall  be  signed  by 
the  inventor. 

(R.  S.,  §  4889,  as  amended,  Act  March  3,  1915,  c.  94, 
§  2.)     Drawings,  when  requisite. 

When  the  nature  of  the  case  admits  of  drawings,  the 
applicant  shall  furnish  one  copy  signed  by  the  inventor 
or  his  attorney  in  fact,  which  shall  be  filed  in  the  Patent 
Office;  and  a  copy  of  the  drawing  to  be  furnished  by  the 
Patent  Office,  shall  be  attached  to  the  patent  as  a  part  of 
the  specification. 

FEDERAL  ANTITRUST  ACT  OF  OCTOBER  15,  1914 

38  Statutes  at  Large,  730 

An  Act  to  supplement  existing  laws  against  unlawful 
restraints  and  monopolies,  and  for  other  purposes 1 

(In  effect  October  15,  1914) 

Be  it  enacted  by  the  Senate  and  House  of  Representatives 
of  the  United  States  of  America  in  Congress  assembled,  That 
"antitrust  laws,"  as  used  herein,  includes  the  Act  entitled 
"An  Act  to  protect  trade  and  commerce  against  unlawful 
restraints  and  monopolies,"  approved  July  second,  eight- 
een hundred  and  ninety;  sections  seventy- three  to  seventy- 
seven,  inclusive,  of  an  Act  entitled  "An  Act  to  reduce  tax- 
ation, to  provide  revenue  for  the  Government,  and  for  other 
purposes,"  of  August  twenty-seventh,  eighteen  hundred 
and  ninety-four;  an  Act  entitled  "An  Act  to  amend  sec- 
tions seventy-three  and  seventy-six  of  the  Act  of  August 
twenty-seventh,  eighteen  hundred  and  ninety-four,  en- 
titled 'An  Act  to  reduce  taxation  to  provide  revenue  for 
the  Government,   and  for  other  purposes,'"   approved 

1  All  parts  having  no  direct  bearing  on  the  subject  of  Patents  are 
omitted. 


THE    FEDERAL   ANTITRUST   ACT   OF    1914  099 

February  twelfth,  nineteen  hundred  and  thirteen;  and  also 
this  Act. 

"  Commerce, "  as  used  herein,  means  trade  or  commerce 
among  the  several  States  and  with  foreign  nations,  or 
between  the  District  of  Columbia  or  any  Territory  of  the 
United  States  and  any  State,  Territory,  or  foreign  nation, 
or  between  any  insular  possessions  or  other  places  under 
the  jurisdiction  of  the  United  States,  or  between  any  such 
possession  or  place  and  any  State  or  Territory  of  the 
United  States  or  the  District  of  Columbia  or  any  foreign 
nation,  or  within  the  District  of  Columbia  or  any  Territory 
or  any  insular  possession  or  other  place  under  the  juris- 
diction of  the  United  States:  Provided,  That  nothing  in 
this  Act  contained  shall  apply  to  the  Philippine  Islands. 

The  word  " person"  or  "persons"  wherever  used  in  this 
Act  shall  be  deemed  to  include  corporations  and  associa- 
tions existing  under  or  authorized  by  the  laws  of  either  the 
United  States,  the  laws  of  any  of  the  Territories,  the  laws 
of  any  State,  or  the  laws  of  any  foreign  country. 

Section  2.  That  it  shall  be  unlawful  for  any  person 
engaged  in  commerce,  in  the  course  of  such  commerce, 
either  directly  or  indirectly,  to  discriminate  in  price  be- 
tween different  purchasers  of  commodities,  which  com- 
modities are  sold  for  use,  consumption,  or  resale  within 
the  United  States  or  any  Territory  thereof  or  the  District 
of  Columbia  or  any  insular  possession  or  other  place  under 
the  jurisdiction  of  the  United  States,  where  the  effect 
of  such  discrimination  may  be  to  substantially  lessen  com- 
petition or  tend  to  create  a  monopoly  in  any  line  of  com- 
merce: Provided,  That  nothing  herein  contained  shall 
prevent  discrimination  in  price  between  purchasers  of 
commodities  on  account  of  differences  in  the  grade,  qual- 
ity, or  quantity  of  the  commodity  sold,  or  that  makes  only 
due  allowance  for  difference  in  the  cost  of  selling  or  trans- 


1000  THE  PATENT  STATUTES 

puliation,  or  discrimination  in  price  in  the  same  or  differ- 
ent communities  made  in  good  faith  to  meet  competition: 
And  provided  further,  That  nothing  herein  contained  shall 
prevent  persons  engaged  in  selling  goods,  wares,  or  mer- 
chandise in  commerce  from  selecting  their  own  customers 
in  bona  fide  transactions  and  not  in  restraint  of  trade. 

Section  3.  That  it  shall  be  unlawful  for  any  person 
engaged  in  commerce,  in  the  course  of  such  commerce, 
to  lease  or  make  a  sale  or  contract  for  sale  of  goods,  wares, 
merchandise,  machinery,  supplies  or  other  commodities, 
whether  patented  or  unpatented,  for  use,  consumption  or 
resale  within  the  United  States  or  any  Territory  thereof 
or  the  District  of  Columbia  or  any  insular  possession  or 
other  place  under  the  jurisdiction  of  the  United  States,  or 
fix  a  price  charged  therefor,  or  discount  from,  or  rebate 
upon,  such  price,  on  the  condition,  agreement  or  under- 
standing that  the  lessee  or  purchaser  thereof  shall  not  use 
or  deal  in  the  goods,  wares,  merchandise,  machinery,  sup- 
plies or  other  commodities  of  a  competitor  or  competitors 
of  the  lessor  or  seller,  where  the  effect  of  such  lease,  sale, 
or  contract  for  sale  or  such  condition,  agreement  or  under- 
standing may  be  to  substantially  lessen  competition  or 
tend  to  create  a  monopoly  in  any  line  of  commerce. 

Section  4.  That  any  person  who  shall  be  injured  in  his 
business  or  property  by  reason  of  anything  forbidden  in 
the  antitrust  laws  may  sue  therefor  in  any  district  court 
of  the  United  States  in  the  district  in  which  the  defendant 
resides  or  is  found  or  has  an  agent,  without  respect  to  the 
amount  in  controversy,  and  shall  recover  threefold  the 
damages  by  him  sustained,  and  the  cost  of  suit,  including 
a  reasonable  attorney's  fee. 

Section  5.  That  a  final  judgment  or  decree  hereafter 
rendered  in  any  criminal  prosecution  or  in  any  suit  or 
proceeding  in  equity  brought  by  or  on  behalf  of  the  United 


THE    FEDERAL   ANTITRUST    ACT    OF    1914  1001 

States  under  the  antitrust  laws  to  the  effect  that  a  de- 
fendant has  violated  said  laws  shall  be  prima  facie  evi- 
dence against  such  defendant  in  any  suit  or  proceeding 
brought  by  any  other  party  against  such  defendant  under 
said  laws  as  to  all  matters  respecting  which  said  judgment 
or  decree  would  be  an  estoppel  as  between  the  parties 
thereto :  Provided,  That  this  section  shall  not  apply  to  con- 
sent judgments  or  decrees  entered  before  any  testimony 
has  been  taken:  Provided  further,  That  this  section  shall 
not  apply  to  consent  judgments  or  decrees  rendered  in 
criminal  proceedings  or  suits  in  equity  now  pending  in 
which  the  taking  of  testimony  has  been  commenced  but 
has  not  been  concluded,  provided  such  judgments  or  de- 
crees are  rendered  before  any  further  testimony  is  taken. 

Whenever  any  suit  or  proceeding  in  equity  or  criminal 
prosecution  is  instituted  by  the  United  States  to  prevent, 
restrain,  or  punish  violations  of  any  of  the  antitrust  laws 
the  running  of  the  statute  of  limitations  in  respect  of  each 
and  every  private  right  of  action  arising  under  said  laws 
and  based  in  whole  or  in  part  on  anjr  matter  complained 
of  in  said  suit  or  proceeding  shall  be  suspended  during  the 
pendency  thereof. 

Section  9.  .  .  .  Prosecutions  hereunder  may  be  in 
the  district  court  of  the  United  States  for  the  district 
wherein  the  offence  may  have  been  committed. 

That  nothing  in  this  section  shall  be  held  to  take  away 
or  impair  the  jurisdiction  of  the  courts  of  the  several  States 
under  the  laws  thereof;  and  a  judgment  of  conviction  or 
acquittal  on  the  merits  under  the  laws  of  any  State  shall 
be  a  bar  to  any  prosecution  hereunder  for  the  same  act  or 
acts. 

Section  11.  That  authority  to  enforce  compliance  with 
sections  two,  three,  seven,  and  eight  of  this  Act  by  the 
persons  respectively  subject  thereto  is  hereby  vested  in 


L002  THE    PATENT    STATUTES 

the  Interstate  Commerce  Commission  where  applicable 
to  common  carriers,  in  the  Federal  Reserve  Board  where 
applicable  to  banks,  banking  associations,  and  trust  com- 
panies and  in  the  Federal  Trade  Commission  where  ap- 
plicable to  all  other  character  of  commerce,  to  be  exercised 
as  follows: 

Whenever  the  commission  or  board  vested  with  juris- 
diction thereof  shall  have  reason  to  believe  that  any  per- 
son is  violating  or  has  violated  any  of  the  provisions  of 
sections  two,  three,  seven,  and  eight  of  this  Act  it  shall 
issue  and  serve  upon  such  person  a  complaint  stating  its 
charges  in  that  respect  and  containing  a  notice  of  a  hear- 
ing upon  a  day  and  at  a  place  therein  fixed  at  least  thirty 
days  after  the  service  of  said  complaint.  The  person  so 
complained  of  shall  have  the  right  to  appear  at  the  place 
and  time  so  fixed  and  show  cause  why  an  order  should 
not  be  entered  by  the  commission  or  board  requiring  such 
person  to  cease  and  desist  from  the  violation  of  the  law  so 
charged  in  said  complaint. 

Any  person  may  make  application,  and  upon  good 
cause  shown  may  be  allowed  by  the  commission  or  board, 
to  intervene  and  appear  in  said  proceeding  by  counsel 
or  in  person.  The  testimony  in  any  such  proceeding  shall 
be  reduced  to  writing  and  filed  in  the  office  of  the  com- 
mission or  board. 

If  upon  such  hearing  the  commission  or  board,  as  the 
case  may  be,  shall  be  of  the  opinion  that  any  of  the  pro- 
visions of  said  sections  have  been  or  are  being  violated, 
it  shall  make  a  report  in  writing  in  which  it  shall  state  its 
findings  as  to  the  facts,  and  shall  issue  and  cause  to  be 
served  on  such  person  an  order  requiring  such  person  to 
cease  and  desist  from  such  violations,  and  divest  itself 
of  the  stock  held  or  rid  itself  of  the  directors  chosen  con- 
trary to  the  provisions  of  sections  seven  and  eight  of  this 


THE    FEDERAL   ANTITRUST   ACT   OF    1914  100:$ 

Act,  if  any  there  be,  in  the  manner  and  within  the  time 
fixed  by  said  order.  Until  a  transcript  of  the  record  in 
such  hearing  shall  have  been  filed  in  a  circuit  court  of 
appeals  of  the  United  States,  as  hereinafter  provided,  the 
commission  or  board  may  at  any  time,  upon  such  notice 
and  in  such  manner  as  it  shall  deem  proper,  modify  or 
set  aside,  in  whole  or  in  part,  any  report  or  any  order  made 
or  issued  by  it  under  this  section. 

If  such  person  fails  or  neglects  to  obey  such  order  of  the 
commission  or  board  while  the  same  is  in  effect,  the  com- 
mission or  board  may  apply  to  the  circuit  court  of  appeals 
of  the  United  States,  within  any  circuit  where  the  viola- 
tion complained  of  was  or  is  being  committed,  or  where 
such  person  resides  or  carries  on  business,  for  the  enforce- 
ment of  its  order,  and  shall  certify  and  file  with  its  appli- 
cation a  transcript  of  the  entire  record  in  the  proceeding, 
including  all  the  testimony  taken  and  the  report  and  order 
of  the  commission  or  board.  Upon  such  filing  of  the  ap- 
plication and  transcript  the  court  shall  cause  notice  thereof 
to  be  served  upon  such  person  and  thereupon  shall  have 
jurisdiction  of  the  proceeding  and  of  the  question  de- 
termined therein,  and  shall  have  power  to  make  and  enter 
upon  the  pleadings,  testimony,  and  proceedings  set  forth 
in  such  transcript  a  decree  affirming,  modifying,  or  setting 
aside  the  order  of  the  commission  or  board.  The  findings 
of  the  commission  or  board  as  to  the  facts,  if  supported 
by  testimony,  shall  be  conclusive.  If  either  party  shall 
apply  to  the  court  for  leave  to  adduce  additional  evidence, 
and  shall  show  to  the  satisfaction  of  the  court  that  such 
additional  evidence  is  material  and  that  there  were  rea- 
sonable grounds  for  the  failure  to  adduce  such  evidence  in 
the  proceeding  before  the  commission  or  board,  the  court 
may  order  such  additional  evidence  to  be  taken  before 
the  commission  or  board  and  to  be  adduced  upon  the  hear- 


1004  THE  PATENT  STATUTES 

ing  in  such  manner  and  upon  such  terms  and  conditions 
as  to  the  court  may  seem  proper.  The  commission  or 
hoard  may  modify  its  findings  as  to  the  facts,  or  make  new 
findings,  by  reason  of  the  additional  evidence  so  taken,  and 
it  shall  file  such  modified  or  new  findings,  which,  if  sup- 
ported by  testimony,  shall  be  conclusive,  and  its  recom- 
mendation, if  any,  for  the  modification  or  setting  aside 
of  its  original  order,  with  the  return  of  such  additional 
evidence.  The  judgment  and  decree  of  the  court  shall  be 
final,  except  that  the  same  shall  be  subject  to  review  by  the 
Supreme  Court  upon  certiorari,  as  provided  in  section 
two  hundred  and  forty  of  the  Judicial  Code. 

Any  party  required  by  such  order  of  the  commission 
or  board  to  cease  and  desist  from  a  violation  charged 
may  obtain  a  review  of  such  order  in  said  circuit  court  of 
appeals  by  filing  in  the  court  a  written  petition  praying 
that  the  order  of  the  commission  or  board  be  set  aside. 
A  copy  of  such  petition  shall  be  forthwith  served  upon  the 
commission  or  board,  and  thereupon  the  commission  or 
board  forthwith  shall  certify  and  file  in  the  court  a  tran- 
script of  the  record  as  hereinbefore  provided.  Upon  the 
filing  of  the  transcript  the  court  shall  have  the  same  juris- 
diction to  affirm,  set  aside,  or  modify  the  order  of  the  com- 
mission or  board  as  in  the  case  of  an  application  by  the 
commission  or  board  for  the  enforcement  of  its  order,  and 
the  findings  of  the  commission  or  board  as  to  the  facts, 
if  supported  by  testimony,  shall  in  like  manner  be  con- 
clusive. 

The  jurisdiction  of  the  circuit  court  of  appeals  of  the 
United  States  to  enforce,  set  aside,  or  modify  orders  of 
the  commission  or  board  shall  be  exclusive. 

Such  proceedings  in  the  circuit  court  of  appeals  shall  be 
given  precedence  over  other  cases  pending  therein,  and 
shall  be  in  every  way  expedited.     No  order  of  the  com- 


THE    FEDERAL   ANTITRUST   ACT   OF    1914  KM).") 

mission  or  board  or  the  judgment  of  the  court  to  enforce 
the  same  shall  in  any  wise  relieve  or  absolve  any  person 
from  any  liability  under  the  antitrust  Acts. 

Complaints,  orders,  and  other  processes  of  the  commis- 
sion or  board  under  this  section  may  be  served  by  any- 
one duly  authorized  by  the  commission  or  board,  either 
(a)  by  delivering  a  copy  thereof  to  the  person  to  be  served, 
or  to  a  member  of  the  partnership  to  be  served,  or  to  the 
president,  secretary,  or  other  executive  officer  or  a  director 
of  the  corporation  to  be  served;  or  (b)  by  leaving  a  copy 
thereof  at  the  principal  office  or  place  of  business  of  such 
person;  or  (c)  by  registering  and  mailing  a  copy  thereof 
addressed  to  such  person  at  his  principal  office  or  place  of 
business.  The  verified  return  by  the  person  so  serving 
said  complaint,  order,  or  other  process  setting  forth  the 
manner  of  said  service  shall  be  proof  of  the  same,  and  the 
return  post-office  receipt  for  said  complaint,  order,  or  other 
process  registered  and  mailed  as  aforesaid  shall  be  proof 
of  the  service  of  the  same. 

Section  12.  That  any  suit,  action,  or  proceeding  under 
the  antitrust  laws  against  a  corporation  may  be  brought 
not  only  in  the  judicial  district  whereof  it  is  an  inhabi- 
tant, but  also  in  any  district  wherein  it  may  be  found  or 
transacts  business;  and  all  process  in  such  cases  may 
be  served  in  the  district  of  which  it  is  an  inhabitant,  or 
wherever  it  may  be  found. 

Section  13.  That  in  any  suit,  action,  or  proceeding 
brought  by  or  on  behalf  of  the  United  States  subpoenas 
for  witnesses  who  are  required  to  attend  a  court  of  the 
United  States  in  any  judicial  district  in  any  case,  civil 
or  criminal,  arising  under  the  antitrust  laws  may  run  into 
any  other  district:  Provided,  That  in  civil  cases  no  writ 
of  subpoena  shall  issue  for  witnesses  living  out  of  the 
district  in  which  the  court  is  held  at  a  greater  distance 


1006  THE   PATENT   STATUTES 

than  one  hundred  miles  from  the  place  of  holding  the 
same  without  the  permission  of  the  trial  court  being  first 
had  upon  proper  application  and  cause  shown. 

Section  14.  That  whenever  a  corporation  shall  violate 
any  of  the  penal  provisions  of  the  antitrust  laws,  such 
violation  shall  be  deemed  to  be  also  that  of  the  individual 
directors,  officers,  or  agents  of  such  corporation  who  shall 
have  authorized,  ordered,  or  done  any  of  the  acts  con- 
stituting in  whole  or  in  part  such  violation,  and  such 
violation  shall  be  deemed  a  misdemeanor,  and  upon  con- 
viction therefor  of  any  such  director,  officer,  or  agent  he 
shall  be  punished  by  a  fine  of  not  exceeding  $5,000  or  by 
imprisonment  for  not  exceeding  one  year,  or  by  both,  in 
the  discretion  of  the  court. 

Section  15.  That  the  several  district  courts  of  the 
United  States  are  hereby  invested  with  jurisdiction  to 
prevent  and  restrain  violations  of  this  Act,  and  it  shall  be 
the  duty  of  the  several  district  attorneys  of  the  United 
States,  in  their  respective  districts,  under  the  direction 
of  the  Attorney  General,  to  institute  proceedings  in  equity 
to  prevent  and  restrain  such  violations.  Such  proceed- 
ings may  be  by  way  of  petition  setting  forth  the  case  and 
praying  that  such  violation  shall  be  enjoined  or  otherwise 
prohibited.  When  the  parties  complained  of  shall  have 
been  duly  notified  of  such  petition,  the  court  shall  proceed, 
as  soon  as  may  be,  to  the  hearing  and  determination  of  the 
case;  and  pending  such  petition,  and  before  final  decree, 
the  court  may  at  any  time  make  such  temporary  restrain- 
ing order  or  prohibition  as  shall  be  deemed  just  in  the 
premises.  Whenever  it  shall  appear  to  the  court  before 
which  any  such  proceedings  may  be  pending  that  the  ends 
of  justice  require  that  other  parties  should  be  brought 
before  the  court,  the  court  may  cause  them  to  be  sum- 
moned, whether  they  reside  in  the  district  in  which  the 


THE    FEDERAL  ANTITRUST   ACT   OF    1914  1007 

court  is  held  or  not,  and  subpoenas  to  that  end  may  be 
served  in  any  district  by  the  marshal  thereof. 

Section  16.  That  any  person,  firm,  corporation,  or 
association  shall  be  entitled  to  sue  for  and  have  injunctive 
relief,  in  any  court  of  the  United  States  having  jurisdic- 
tion over  the  parties,  against  threatened  loss  or  damage 
by  a  violation  of  the  antitrust  laws,  including  sections  two, 
three,  seven  and  eight  of  this  Act,  when  and  under  the 
same  conditions  and  principles  as  injunctive  relief  against 
threatened  conduct  that  will  cause  loss  or  damage  is 
granted  by  courts  of  equity,  under  the  rules  governing 
such  proceedings,  and  upon  the  execution  of  proper  bond 
against  damages  for  an  injunction  improvidently  granted 
and  a  showing  that  the  danger  of  irreparable  loss  or  dam- 
age is  immediate,  a  preliminary  injunction  may  issue: 
Provided,  That  nothing  therein  contained  shall  be  con- 
strued to  entitle  any  person,  firm,  corporation,  or  associa- 
tion, except  the  United  States,  to  bring  suit  in  equity  for 
injunctive  relief  against  any  common  carrier  subject  to  the 
provisions  of  the  Act  to  regulate  commerce,  approved 
February  fourth,  eighteen  hundred  and  eighty-seven, 
in  respect  of  any  matter  subject  to  the  regulation,  super- 
vision, or  other  jurisdiction  of  the  Interstate  Commerce 
Commission. 

Section  17.  That  no  preliminary  injunction  shall  be 
issued  without  notice  to  the  opposite  party. 

No  temporary  restraining  order  shall  be  granted  with- 
out notice  to  the  opposite  party  unless  it  shall  clearly 
appear  from  specific  facts  shown  by  affidavit  or  by  the 
verified  bill  that  immediate  and  irreparable  injury,  loss, 
or  damage  will  result  to  the  applicant  before  notice  can 
be  served  and  a  hearing  had  thereon.  Every  such  tempo- 
rary restraining  order  shall  be  indorsed  with  the  date  and 
hour  of  issuance,  shall  be  forthwith  filed  in  the  clerk's 


1()()8  THE    PATENT  STATUTES 

office  and  entered  of  record,  shall  define  the  injury  and 
slate  why  it  is  irreparable  and  why  the  order  was  granted 
without  notice,  and  shall  by  its  terms  expire  within  such 
time  after  entry,  not  to  exceed  ten  days,  as  the  court  or 
judge  may  fix,  unless  within  the  time  so  fixed  the  order 
is  extended  for  a  like  period  for  good  cause  shown,  and  the 
reasons  for  such  extension  shall  be  entered  of  record. 
In  case  a  temporary  restraining  order  shall  be  granted 
without  notice  in  the  contingency  specified,  the  matter 
of  the  issuance  of  a  preliminary  injunction  shall  be  set 
down  for  a  hearing  at  the  earliest  possible  time  and  shall 
take  precedence  of  all  matters  except  older  matters  of  the 
same  character;  and  when  the  same  comes  up  for  hearing 
the  party  obtaining  the  temporary  restraining  order  shall 
proceed  with  the  application  for  a  preliminary  injunction, 
and  if  he  does  not  do  so  the  court  shall  dissolve  the  tem- 
porary restraining  order.  Upon  two  days'  notice  to  the 
party  obtaining  such  temporary  restraining  order  the 
opposite  party  may  appear  and  move  the  dissolution  or 
modification  of  the  order,  and  in  that  event  the  court  or 
judge  shall  proceed  to  hear  and  determine  the  motion  as 
expeditiously  as  the  ends  of  justice  may  require. 

Section  two  hundred  and  sixty-three  of  an  Act  entitled 
"An  Act  to  codify,  revise,  and  amend  the  laws  relating 
to  the  judiciary,"  approved  March  third,  nineteen  hun- 
dred and  eleven,  is  hereby  repealed. 

Nothing  in  this  section  contained  shall  be  deemed  to 
alter,  repeal,  or  amend  section  two  hundred  and  sixty- 
six  of  an  Act  entitled  "An  Act  to  codify,  revise,  and  amend 
the  laws  relating  to  the  judiciary,"  approved  March  third, 
nineteen  hundred  and  eleven. 

Section  18.  That,  except  as  otherwise  provided  in 
section  sixteen  of  this  Act,  no  restraining  order  or  inter- 
locutory order  of  injunction  shall  issue,  except  upon  the 


THE    FEDERAL   ANTITRUST    ACT    OF    1914  1009 

giving  of  security  by  the  applicant  in  such  sum  as  the 
court  or  judge  may  deem  proper,  conditioned  upon  the 
payment  of  such  costs  and  damages  as  may  be  incurred 
or  suffered  by  any  party  who  may  be  found  to  have  been 
wrongfully  enjoined  or  restrained  thereby. 

Section  19.  That  every  order  of  injunction  or  restrain- 
ing order  shall  set  forth  the  reasons  for  the  issuance  of 
the  same,  shall  be  specific  in  terms,  and  shall  describe  in 
reasonable  detail,  and  not  by  reference  to  the  bill  of  com- 
plaint or  other  document,  the  act  or  acts  sought  to  be 
restrained,  and  shall  be  binding  only  upon  the  parties  to 
the  suit,  their  officers,  agents,  servants,  employees  and 
attorneys,  or  those  in  active  concert  or  participating  with 
them,  and  who  shall,  by  personal  service,  or  otherwise, 
have  received  actual  notice  of  the  same. 

Section  21.  That  any  person  who  shall  willfully  dis- 
obey any  lawful  writ,  process,  order,  rule,  decree  or  com- 
mand of  any  district  court  of  the  United  States  or  any 
court  of  the  District  of  Columbia  by  doing  any  act  or 
thing  therein,  or  thereby  forbidden  to  be  done  by  him  if 
the  act  or  thing  so  done  by  him  be  of  such  character  as  to 
constitute  also  a  criminal  offence  under  any  statute  of  the 
United  States,  or  under  the  laws  of  any  State  in  which  the 
act  was  committed,  shall  be  proceeded  against  for  his  said 
contempt  as  hereinafter  provided. 

Section  22.  That  whenever  it  shall  be  made  to  appear 
to  any  district  court  or  judge  thereof,  or  to  any  judge 
therein  sitting,  by  the  return  of  a  proper  officer  on  lawful 
process,  or  upon  the  affidavit  of  some  credible  person,  or 
by  information  filed  by  any  district  attorney,  that  there  is 
reasonable  ground  to  believe  that  any  person  has  been 
guilty  of  such  contempt,  the  court  or  judge  thereof,  or  any 
judge  therein  sitting,  may  issue  a  rule  requiring  the  said 
person  so  charged  to  show  cause  upon  a  day  certain  why 


1010  THE    PATENT   STATUTES 

be  should  not  be  punished  therefor,  which  rule,  together 
with  a  copy  of  the  affidavit  or  information,  shall  be  served 
upon  the  person  charged  with  sufficient  promptness  to 
enable  him  to  prepare  for  and  make  return  to  the  order 
at  the  time  fixed  therein.  If  upon  or  by  such  return,  in 
the  judgment  of  the  court,  the  alleged  contempt  be  not 
sufficiently  purged,  a  trial  shall  be  directed  at  a  time  and 
place  fixed  by  the  court:  Provided,  however,  That  if  the 
accused,  being  a  natural  person,  fail  or  refuse  to  make 
return  to  the  rule  to  show  cause,  an  attachment  may  issue 
against  his  person  to  compel  an  answer,  and  in  case  of  his 
continued  failure  or  refusal,  or  if  for  any  reason  it  be 
impracticable  to  dispose  of  the  matter  on  the  return  day, 
he  may  be  required  to  give  reasonable  bail  for  his  attend- 
ance at  the  trial  and  his  submission  to  the  final  judgment 
of  the  court.  Where  the  accused  is  a  body  corporate, 
an  attachment  for  the  sequestration  of  its  property  may 
be  issued  upon  like  refusal  or  failure  to  answer. 

In  all  cases  within  the  purview  of  this  Act  such  trial 
may  be  by  the  court,  or,  upon  demand  of  the  accused, 
by  a  jury;  in  which  latter  event  the  court  may  impanel 
a  jury  from  the  jurors  then  in  attendance,  or  the  court 
or  the  judge  thereof  in  chambers  may  cause  a  sufficient 
number  of  jurors  to  be  selected  and  summoned,  as  pro- 
vided by  law,  to  attend  at  the  time  and  place  of  trial, 
at  which  time  a  jury  shall  be  selected  and  impaneled  as 
upon  a  trial  for  misdemeanor;  and  such  trial  shall  conform 
as  near  as  may  be  to  the  practice  in  criminal  cases  prose- 
cuted by  indictment  or  upon  information. 

If  the  accused  be  found  guilty,  judgment  shall  be  en- 
tered accordingly,  prescribing  the  punishment,  either 
by  fine  or  imprisonment,  or  both,  in  the  discretion  of  the 
court.  Such  fine  shall  be  paid  to  the  United  States,  or  to 
the  complainant  or  other  party  injured  by  the  act  con- 


THE    FEDERAL  ANTITRUST   ACT   OF    1914  1011 

stituting  the  contempt,  or  may,  where  more  than  one  is  so 
damaged,  be  divided  or  apportioned  among  them  as  the 
court  may  direct,  but  in  no  case  shall  the  fine  to  be  paid 
to  the  United  States  exceed,  in  case  the  accused  is  a  nat- 
ural person,  the  sum  of  SI, 000,  nor  shall  such  imprison- 
ment exceed  the  term  of  six  months:  Provided,  That  in 
any  case  the  court  or  a  judge  thereof  may,  for  good  cause 
shown,  by  affidavit  or  proof  taken  in  open  court  or  before 
such  judge  and  filed  with  the  papers  in  the  case,  dispense 
with  the  rule  to  show  cause,  and  may  issue  an  attachment 
for  the  arrest  of  the  person  charged  with  contempt;  in 
which  event  such  person,  when  arrested,  shall  be  brought 
before  such  court  or  a  judge  thereof  without  unnecessary 
delay  and  shall  be  admitted  to  bail  in  a  reasonable  penalty 
for  his  appearance  to  answer  to  the  charge  or  for  trial  for 
the  contempt;  and  thereafter  the  proceedings  shall  be  the 
same  as  provided  herein  in  case  the  rule  had  issued  in  the 
first  instance. 

Section  23.  That  the  evidence  taken  upon  the  trial  of 
any  person  so  accused  may  be  preserved  by  bill  of  excep- 
tions, and  any  judgment  of  conviction  may  be  reviewed 
upon  writ  of  error  in  all  respects  as  now  provided  by  law 
in  criminal  cases,  and  may  be  affirmed,  reversed,  or  modi- 
fied as  justice  may  require.  Upon  the  granting  of  such 
writ  of  error,  execution  of  judgment  shall  be  stayed,  and 
the  accused,  if  thereby  sentenced  to  imprisonment,  shall 
be  admitted  to  bail  in  such  reasonable  sum  as  may  be 
required  by  the  court,  or  by  any  justice,  or  any  judge  of 
any  district  court  of  the  United  States  or  any  court  of  the 
District  of  Columbia. 

Section  24.  That  nothing  herein  contained  shall  be 
construed  to  relate  to  contempts  committed  in  the  pres- 
ence of  the  court,  or  so  near  thereto  as  to  obstruct  the 
administration  of  justice,  nor  to  contempts  committed 


1012  THE  PATENT  STATUTES 

in  disobedience  of  any  lawful  writ,  process,  order,  rule, 
decree,  or  command  entered  in  any  suit  or  action  brought 
or  prosecuted  in  the  name  of,  or  on  behalf  of,  the  United 
States,  but  the  same,  and  all  other  cases  of  contempt  not 
specifically  embraced  within  section  twenty-one  of  this 
Act,  may  be  punished  in  conformity  to  the  usages  at  law 
and  in  equity  now  prevailing. 

Section  25.  That  no  proceeding  for  contempt  shall  be 
instituted  against  any  person  unless  begun  within  one 
year  from  the  date  of  the  act  complained  of;  nor  shall 
any  such  proceeding  be  a  bar  to  any  criminal  prosecution 
for  the  same  act  or  acts;  but  nothing  herein  contained  shall 
affect  any  proceedings  in  contempt  pending  at  the  time 
of  the  passage  of  this  Act. 

Section  26.  That  if  any  clause,  sentence,  paragraph, 
or  part  of  this  Act  shall,  for  any  reason,  be  adjudged  by 
any  court  of  competent  jurisdiction  to  be  invalid,  such 
judgment  shall  not  affect,  impair,  or  invalidate  the  re- 
mainder thereof,  but  shall  be  confined  in  its  operation  to 
the  clause,  sentence,  paragraph,  or  part  thereof  directly 
involved  in  the  controversy  in  which  such  judgment  shall 
have  been  rendered. 

Approved  October  15,  1914. 

PATENT  ACT  OF  1916 
Statutes  at  Large,  Page — 

(Revised  Statutes  §  440  as  amended.) 

There  shall  be  in  the  Patent  Office: 

One  chief  clerk,  who  shall  be  qualified  to  act  as  a  prin- 
cipal examiner. 

One  librarian,  who  shall  be  qualified  to  act  as  an  assist- 
ant examiner. 

Five  law  examiners. 


THE  PATENT  ACT  OF  1910  1013 

One  examiner  of  classification. 

One  examiner  of  interferences. 

One  examiner  of  trade-marks  and  designs. 

One  first  assistant  examiner  of  trade-marks  and  designs. 

Six  assistant  examiners  of  trade-marks  and  designs. 

Forty-three  principal  examiners. 

Eighty-six  first  assistant  examiners. 

Eighty-six  second  assistant  examiners. 

Eighty-six  third  assistant  examiners. 

Eighty-six  fourth  assistant  examiners;  and  such  other 
examiners  and  assistant  examiners  in  the  various  grades 
as  the  Congress  shall  from  time  to  time  provide  for. 

(R.  S.,  §476,  as  amended,  Act  Feb.  15,  1916,  c— ,  §  1.) 
Officers  and  employees. 

There  shall  be  in  the  Patent  Office  a  Commissioner  of 
Patents,  one  first  assistant  commissioner,  one  assistant 
commissioner,  and  five  examiners  in  chief,  who  shall  be 
appointed  by  the  President,  by  and  with  the  advice  and 
consent  of  the  Senate.  The  first  assistant  commissioner 
and  the  assistant  commissioner  shall  perform  such  duties 
pertaining  to  the  office  of  commissioner  as  may  be  assigned 
to  them,  respectively,  from  time  to  time  by  the  Commis- 
sioner of  Patents.  All  other  officers,  clerks,  and  employees 
authorized  by  law  for  the  office  shall  be  appointed  by  the 
Secretary  of  the  Interior  upon  the  nomination  of  the 
Commissioner  of  Patents,  in  accordance  with  existing  law. 

(R.  S.,  §  477,  as  amended,  Act  Feb.  15,  1916,  c— ,  §  2.) 
Salaries. 

The  salaries  of  the  officers  mentioned  in  the  preceding 
section  shall  be  as  follows : 

The  Commissioner  of  Patents,  $5,000  a  year. 

The  first  Assistant  Commissioner  of  Patents,  $4,500  a 
year. 


1014  THE   PATENT   STATUTES 

The  Assistant  Commissioner  of  Patents,  $3,500  a  year. 
Five  examiners  in  chief,  $3,500  a  year  each. 

PATENT,  TRADE-MARK,  AND  COPYRIGHT  ACT 
OF  AUGUST  17,  1916 

Extension    of   time   for  filing   application,   etc.;   period 

granted. 

Any  applicant  for  letters  patent  or  for  the  registration 
of  any  trade-mark,  print,  or  label,  being  within  the  pro- 
visions of  this  iict,  if  unable  on  account  of  the  existing  and 
continuing  state  of  war  to  file  any  application  or  pay  any 
official  fee  or  take  any  required  action  within  the  period 
now  limited  by  law,  shall  be  granted  an  extension  of  nine 
months  beyond  the  expiration  of  said  period. 

Persons  who  may  take  advantage  of  extension  of  time 
for  filing  application,  etc. 

The  provisions  of  this  Act  shall  be  limited  to  citizens  or 
subjects  of  countries  which  extend  substantially  similar 
privileges  to  the  citizens  of  the  United  States,  and  no 
extension  shall  be  granted  under  this  Act  to  the  citizens 
or  subjects  of  any  country  while  said  country  is  at  war 
with  the  United  States. 

Defaults  within    scope   of  extension  of  time  for  filing 
application,  etc. 

This  Act  shall  be  operative  to  relieve  from  default  under 
existing  law  occurring  since  August  first,  nineteen  hundred 
and  fourteen,  and  before  the  first  day  of  January,  nine- 
teen hundred  and  eighteen,  and  all  applications  and  letters 
patent  and  registrations  in  the  filing  or  prosecution 
whereof  default  has  occurred  for  which  this  Act  grants 
relief  shall  have  the  same  force  and  effect  as  if  said  default 
had  not  occurred. 


INDEX 

(The  references  are  to  the  sections) 

Abandoned  Experiments 
See  "  Abandonment." 

Abandonment 

actual,  of  applications,  145. 

actual,  of  invention,  87-92,  145. 

actual,  of  invention,  by  acquiescence  in  rejection  of  applica- 
tion, 92. 

actual,  of  invention,  by  declaration,  89. 

actual,  of  invention,  by  delay,  91. 

actual,  of  invention,  by  disclaimer,  90. 

actual,  of  invention,  by  laches,  91,  92. 

burden  of  proof  of,  88. 

constructive,  of  applications,  146. 

constructive,  of  applications  by  failing  to  bring  suit  to  compel 
issuance,  134. 

constructive,  of  application,  working  constructive  abandonment 
of  invention,  103,  147. 

constructive,  of  invention,  87,  93-99,  104a,  147. 

constructive,  of  invention,  after  application,  103. 

constructive,  of  invention,  must  be  negatived  in  declarations  and 
bills,  425,  579. 

constructive,  of  invention,  not  condoned  by  excuses,  104. 

degree  of  proof  required  to  prove,  108. 

evidence  of  actual,  512. 

evidence  of  constructive,  513. 

how  pleaded  in  actions  at  law,  449. 

how  pleaded  in  actions  in  equity,  602. 

of  experiments,  86. 

of  invention,  86. 

of  invention,  after  issue  of  letters  patent,  106,  107. 

of  patents,  106,  107. 

several  kinds  of,  86. 

1015 


11)1(1  TNDEX 

(The  references  are  to  the  sections) 

Accident 

causing  reissuable  faults,  220. 
necessitating  disclaimers,  193,  194. 

Account 

of  damages,  how  taken,  573. 
of  profits,  how  taken,  711-750. 

Accountings 

before  masters,  739-743. 

stay  of,  pending  appeals  from  injunctions,  696a. 

when  barred  by  laches,  644. 

Acquiescence 

in  rejection  of  applications,  92. 

necessary  length  of,  as  foundation  of  right  to  preliminary  in- 
junctions, 668,  669. 

need  not  be  universal,  in  order  to  constitute  foundation  of  right 
to  preliminary  injunctions,  670. 

public, as  foundation  of  right  to  preliminary  injunctions,  665,667. 

working  license,  312. 

Acting  Commissioner  of  Patents 

authority  to  sign  letters  patent,  172. 

Actions 

arising  under  the  patent  laws,  379. 

for  infringement,  form  of,  421. 

for  infringement,  where  brought,  389,  390. 

for  infringement,  how  affected  by  subsequent  disclaimers,  193. 

on  assigned  rights  of  action,  395,  435,  579. 

to  enforce  contracts  relevant  to  patents,  388. 

to  set  aside  contracts  relevant  to  patents,  388. 

versus  sellers  or  users,  defended  by  makers,  407. 

Actions  at  Law 

declarations  in,  422-438. 

defendants  in,  401-416. 

for  assigned  rights  of  action,  395,  435. 


INDEX  1017 

(The  references  are  to  the  sections) 

Actions  at  Law — (Continued.) 

for  infringements  of  patents,  421. 

plaintiffs  in,  394-400. 

pleas  in,  439-477. 

practice  in,  489. 

testimony  in,  535. 

trial  of,  4S7. 

what  issues  are  for  the  court,  189. 

what  issues  arc  for  the  jury,  500. 

Actions  in  Equity 

answers  in,  598-622. 
bills  in,  576-584. 
complainants  in,  394-400,  574. 
defendants  in,  401-416,  575. 
depositions  in,  638. 
documentary  evidence  in,  641. 
for  assigned  rights  of  actions,  395. 
hearings  in,  632. 
hearings  in,  before  masters,  643. 
pleas  in,  589,  590. 
rehearings  in,  645-648. 
replications  in,  623. 
trials  by  jury  in,  642. 

Addition 

to  composition  of  matter,  as  affecting  infringement,  369. 
to  mechanical  subject,  as  affecting  infringement,  347. 
to  process,  as  affecting  infringement,  338. 

Affidavits 

on  motions  for  new  trials,  539. 

on  motions  for  preliminary  injunctions,  662. 

on  motions  to  dissolve  preliminary  injunctions,  694. 

on  petitions  for  leave  to  file  bills  of  review,  652. 

on  petitions  for  rehearings,  647. 

Affirmation 

made  instead  of  oath,  124. 


1018  INDEX 

(The  references  are  to  the  sections) 

Agents 

as  defendants  in  actions  for  infringement,  403. 
not  entitled  to  presumption  when  sued  by  employers  for  in- 
fringement, 403. 
of  States,  as  defendants,  401. 
of  United  States,  as  defendants,  392,  393. 

Aggregation 

distinguished  from  combination,  32. 

Aliens 

suits  against,  in  what  district  brought,  389. 

Amendments 

of  applications  for  patents,  135-139. 

of  bills  in  equity,  586,  587. 

of  declarations  at  law,  483. 

of  drawings  and  models,  138,  214. 

Answers 

to  bills  of  complaint,  588,  598-622. 

to  bills  in  the  nature  of  supplemental  bills,  631. 

to  bills  of  review,  652. 

to  bills  in  the  nature  of  bills  of  review,  653. 

to  supplemental  bills,  631. 

to  supplemental  bills  in  the  nature  of  bills  of  review,  648. 

when  may  set  out  counterclaim,  5916. 

when  used  as  affidavits,  662. 

Anticipation 

See  "  Novelty,"  "  Invention." 

Antiquity  of  Parts 

never  negatives  novelty  of  combinations,  66. 

Anti- Trust  Act 
Sherman,  154. 

Apparatus 

claims  for,  may  be  included  in  patent  for  process,  180. 


INDEX  1010 

(The  references  are  to  the  sections) 

Appearance 

when  a  waiver  of  jurisdictional  defects,  389. 

Appeals 

from  examiners,  to  board  of  examiners-in-chief,  132. 

from  board  of  examiners-in-chief,  to  Commissioner  of  Patents, 

132. 
from  Commissioner,  to  Court  of  Appeals  of  District  of  Columbia, 

133,  141d. 
from  Court  of  Appeals  of  District  of  Columbia,  to  Supreme 

Court  of  the  United  States,  654. 
from  District  Courts  of  the  United  States  to  Circuit  Courts  of 

Appeals,  144,  644a,  654,  655,  656,  696a,  703. 
from  District  Courts  to  Supreme  Court  of  the  United  States,  654. 
from  Supreme  Court  of  the  District  of  Columbia  to  Court  of 

Appeals  of  the  District  of  Columbia,  144,  654. 
order  for  preliminary  injunction,  not  usually  reviewed  unless 

abuse  of  discretion  appears,  696a. 

Applications 

actual  abandonment  of,  145. 

amendments  of,  135-139. 

assignment  of,  without  request  that  patent  issue  to  assignee, 

effect  of,  274. 
Commissioner's  decisions  upon,  148. 
constructive  abandonment  of,  146. 
dates  of,  93,  129. 
dates  of,  how  proven,  129,  491. 
elements  of,  109. 

equivalent  to  reduction  to  practice,  1416. 
examination  of,  130. 
fees  due  upon  filing,  125. 
for  letters  patent,  109. 
for  Patent  Office  extensions,  261,  266. 
for  reissues,  212-214,  250. 
formalities  of  execution,  121,  122. 
how  stated  in  declarations  and  bills,  427,  579. 
may  fix  dates  of  inventions,  59,  69. 
more  than  two  years  after  sale  or  public  use,  93. 


1020  INDEX 

(The  references  are  to  the  sections) 

Applications— {Continued.) 

more  than  two  yours  after  making,  99. 

never  negative  novelty,  58,  60. 

not  a  part  of  the  prior  art,  43. 

not  property  under  Bankruptcy  Act,  290. 

of  executors  or  administrators,  123. 

papers  forming,  when  evidence,  187. 

re-examination  of,  131. 

rejection  of,  131. 

renewal  of  abandoned,  103. 

withdrawal  of,  145. 

Art 

patent-law,  meaning  of  the  word,  3. 
system  of  transacting  business,  not  an,  3. 

Assignees 

as  complainants  or  plaintiffs,  394-397. 

before  issuance  of  patent,  has  legal  title,  171,  274. 

for  benefit  of  creditors,  as  defendants,  401 . 

may  make  disclaimers,  193. 

may  receive  letters  patent,  110,  171. 

may  receive  reissues,  212,  250,  252. 

Assignments 

agreements  void  as  against  public  policy,  when,  276a. 

authenticated,  how,  275. 

conflicting,  281. 

consideration  for,  276. 

construction  of,  278. 

denned,  274. 

descriptions  in,  275. 

equitable,  286. 

how  proved,  495. 

must  be  in  writing,  274. 

notice  of,  281. 

of  extensions,  280. 

of  inventions,  97,  273. 

of  licenses,  310. 


INDEX  1021 

(The  references  are  to  the  sections) 

Assignments —  (Continued. ) 
of  patents,  274. 

of  patents  under  creditors'  bills,  156. 
of  pending  applications  without  request  that  patent  issue  to 

assignee,  effect  of,  274. 
of  rights  of  action  for  past  infringements,  277,  281. 
pendente  lite,  699. 
recording  of,  281. 
reformation  of,  278,  279. 
State  laws  imposing  restrictions  on,  154. 

Assignors 

estopped  to  deny  validity,  469. 

not  estopped  in  suit  by  assignee  against  stranger,  469. 

of  blank  assignments,  274. 

reserving  royalties,  274a. 

who  may  be,  275. 

Assistant  Commissioner  of  Patents 
powers  of,  132,  133,  172. 

Attachments  for  Contempt 

when  issued,  and  against  whom,  708. 

Attorneys 

Patent  Office  registry  of,  129a. 

Bacon,  Francis 

opinion  of,  on  inventions,  152,  152a. 

Bankruptcy 

convejing  title  to  patent  rights,  290. 

conveys  no  title  in  pending  applications,  290. 

patent  applications  not  property  in  sense  of  Bankruptcy  Act,  290. 

Beauty 

has  a  utility  of  its  own,  80. 

Benedict,  Judge 

opinion  on  a  question  of  utility,  78. 


1022  INDEX 

(The  references  are  to  the  sections) 

Bills  in  Equity 

amendments  of,  586,  587. 

answers  to,  588. 

defences  to,  591. 

for  preliminary  injunctions,  660. 

interrogating  part  of,  581. 

introductory  part  of,  578. 

may  be  based  on  fear  of  future  infringement,  579,  636. 

need  not  specify  part  of  defendant's  device  alleged  to  infringe, 

579. 
oaths  to,  584. 
original,  576. 
pleas  to,  589,  590. 
prayer  for  process  in,  582. 
prayer  for  relief  in,  580. 
signature  of  counsel  to,  583. 
stating  part  of,  579. 

to  compel  issue  of  letters  patent,  134,  144. 
to  enforce  or  to  set  aside  contracts,  388. 
to  perpetuate  testimony,  585. 
to  restrain  publications  of  statements  about  patent  controversies, 

585a. 
to  restrain  unfair  competition,  585. 
verified,  how,  584. 
when  may  be  composite,  629. 
when  may  be  used  as  affidavits,  662. 
when  must  specify  the  claims  alleged  to  be  infringed,  579. 

Bills  in  the  Nature  of  Bills  of  Review 

by  whom  filed,  653. 

distinguished  from  bills  of  review,  653. 

required,  when,  653. 

Bills  in  the  Nature  of  Bills  of  Revivor 

by  whom  filed,  628. 
required,  when,  628. 
subordinate  to  original  bills,  624. 

Bills  in  the  Nature  of  Supplemental  Bills 

leave  of  court  necessary  to  filing,  630. 


INDEX  1U23 

(The  references  are  to  the  sections) 

Bills  in  the  Nature  of  Supplemental  Bills — (Continued.) 
required,  when,  626. 
subordinate  to  original  bills,  624. 

Bills  of  Exceptions 

nature  and  function  of,  551,  552. 

what  must  contain,  and  what  exclude,  551,  552. 

when  to  be  prepared  and  signed,  554. 

where  cases  are  tried  by  judge  without  jury,  540. 

Bills  of  Particulars 

the  subject  generally  considered,  590a. 
under  what  circumstances  allowed,  5906. 

Bills  of  Review 

by  whom  filed,  653. 

filed  subsequent  to  appeal,  652. 

sorts  of,  650. 

to  correct  errors  apparent  on  the  record  or  pleadings,  651. 

to  introduce  newly  discovered  evidence,  652. 

when  proper,  650. 

Bills  of  Revivor 

by  whom  filed,  628. 
proceedings  upon,  627. 
subordinate  to  original  bills,  624. 
when  required,  627. 

Bills  of  Revivor  and  Supplement 

when  required,  629. 

Blatchford,  Justice 

opinion  on  invention,  37. 

opinion  on  respective  rights  of  patentees  and  others,  160. 

Blodgett,  Judge 

opinion  on  bills  to  restrain  speech  and  the  press,  585a. 
opinion  on  invention,  35. 


L024  INDEX 

(The  references  are  to  the  sections) 

Bond,  Judge 

opinion  on  invention,  34. 

Bonds 

as  alternative  to  permanent  injunctions  where  patent  has  short 

time  to  run,  702. 
required  from  complainants  on  issuing  preliminary  injunctions, 

688,  696. 
required  from  defendants  in  place  of  preliminary  injunctions, 

685-687. 
required   from   defendants,   where   permanent   injunctions   are 

postponed  till  final  decrees,  702. 
required  from   defendants,   where  permanent  injunctions  are 

suspended  pending  appeals,  703. 

Bradley,  Justice 

dissenting  opinion  in  Hartell  v.  Tilghman,  388. 
opinion  on  bills  to  restrain  speech  and  the  press,  585a. 
opinion  on  description  in  specification,  174. 
opinion  on  invention,  25,  26. 

Brawley,  Judge 

opinion  on  inventions,  152a. 

British  Patents 

when  effective  to  negative  novelty,  55. 

Broadened  Reissues 

when  too  late  to  apply  for,  226,  227. 

Brown,  Justice 

opinion  on  invention,  24. 

Burlington,  Judge 

opinion  of,  on  inventions,  152a. 

Building  Structures 

proper  subject-matter  for  patents,  17. 


INDEX  1025 

(The  references  are  to  the  sections) 

Burden  of  Proof 

in  suit  to  compel  issue  of  letters  patent,  134. 

on  questions  of  abandonment,  88,  108. 

on  questions  of  damages,  565. 

on  questions  of  delay  in  applying  for  reissues,  523. 

on  questions  of  duration  of  patents,  41)3. 

on  questions  of  infringement,  532. 

on  questions  of  intention  in  qui  tarn  cases,  327. 

on  questions  of  invention,  42. 

on  questions  of  novelty,  76. 

on  questions  of  profits,  719. 

on  questions  of  utility,  85. 

on  questions  of  validity,  491,  492. 

Campbell,  Justice 

opinion  on  attempts  to  disguise  legal  liability,  414. 

Causes  of  Action 

when  plurality  of,  are  suable  in  one  action,  417. 

Caveats 

their  nature  and  functions,  143. 

Caveat  Emptor 

application  of  the  maxim,  286. 

Certificate  of  Division  of  Opinion 

when  available  in  a  District  Court,  657. 

Certificate  of  Inquiry 

when  available  in  a  Circuit  Court  of  Appeals,  550,  654,  657a. 

Certiorari 

when  available  in  the  Supreme  Court,  550,  657a. 
what  question  reviewed  on,  657a. 

Chemical  Changes 

not  necessary  to  processes,  3. 


1020  INDEX 

(The  references  are  to  the  sections) 

Circuit  and  District  Courts  of  the  United  States 
jurisdiction  of,  134,  323,  379,  389,  390,  393,  658. 
titles  of,  422,  577. 

Circuit  Courts  of  Appeals 

appeals  to,  from  final  decrees,  654. 

appeals  to,  from  interlocutory  decrees,  644a. 

appeals  to,  from  preliminary  injunctions,  696a. 

certificates  from,  to  Supreme  Court,  550,  654,  657a. 

when  may  dismiss  bill  on  appeal  from  preliminary  injunction, 

696a. 
writs  of  certiorari  to,  from  Supreme  Court,  550,  657a. 
writs  of  error  from,  to  District  Courts,  550. 

Cities 

as  defendants  in  infringement  suits,  401. 

Citizenship 

stated  in  declarations  and  bills,  422,  423,  426,  579. 
stated  in  petitions  for  patents,  110. 
stated  in  specifications  of  patents,  112. 

Claims 

all  inventions  not  covered  by,  dedicated  to  public,  176. 

co-extensive,  180a. 

compound,  in  respect  of  disclaimers,  199. 

construed  broadly  where  invention  successful,  185. 

construed  in  light  of  Patent  Office,  limitations,  187,  187a. 

construed  in  light  of  the  specification,  182. 

construed  in  the  light  of  the  state  of  the  art,  184. 

construed  liberally  if  Patent  Office  limitations  unwarranted, 

187a. 
construed  narrowly  where  patent  not  used,  185. 
construed  to  cover  real  invention,  if  possible,  182. 
construed  to  save  invention,  if  possible,  182,  185. 
containing  statements  of  functions,  183. 
cover  all  uses  of  the  device,  180. 
defective,  218. 

differentiation  between  the  several  claims  of  a  patent,  177. 
each  claim  an  independent  invention,  177. 


INDEX  1027 

(The  references  are  to  the  sections) 

Claims — (Continued.) 

each  element  must  be  described  in  specification,  181. 

elements  not  mentioned  in,  cannot  be  read  into,  181. 

excessive,  216. 

for  combinations,  198. 

for  single  devices,  in  reissues,  246. 

function  of,  176. 

functional  in  form,  117a,  183,  220. 

generic,  116,  117a. 

how  tested  for  co-extensiveness,  180a. 

how  written,  116. 

in  combinations,  impliedly  include  connecting  parts,  117. 

indistinct,  177. 

indistinctness  of,  how  affecting  letters  patent,  178. 

indistinctness  of,  how  pleaded  in  actions  at  law,  455. 

indistinctness  of,  how  pleaded  in  actions  in  equity,  608. 

indistinctness  of,  how  proved,  520. 

in  specifications  of  compositions  of  matter,  119. 

in  specifications  of  designs,  120a. 

in  specifications  of  machines,  117,  117a. 

in  specifications  of  manufactures,  118,  170,  183. 

in  specifications  of  processes,  120. 

insufficient,  218. 

limitation  by  action  in  Patent  Office,  186,  187a. 

limitation  by  Patent  Office  proceedings,  rule  in  Second  Circuit, 

187. 
measure  the  invention,  176. 

process  and  machine  in  same  application,  180,  183. 
process  and  product  in  same  application,  176. 
reference  letters  or  numerals  in,  117a,  182a. 
specific,  116,  177a. 
two  millions  in  force,  191. 

use  of  word  "  means  "  or  "  mechanism  "  in,  117a. 
valid  and  void,  in  same  letters  patent  or  reissue,  177,  203,  249. 
validity  of,  governs  validity  of  letters  patent,  177. 
when  construed  in  the  light  of  other  arts,  184a. 

Clifford,  Justice 

opinion  on  ethical  character  of  patents,  153. 


1 1 128  INDEX 

(The  references  are  to  the  sections) 

Cloud  on  Title 

of  patent,  jurisdiction  of  equity  to  remove,  295. 

Colt,  Judge 

opinion  on  bills  to  restrain  speech  and  the  press,  585a. 
opinion  on  jurisdiction  of  equity,  593. 

Combination 

claim  for,  not  to  be  broadened  by  construction,  186. 

co-operation  of  parts,  32,  33. 

dissolved  by  omission  of  any  one  element,  349. 

distinguished  from  aggregation,  32. 

every  part  of,  conclusively  presumed  to  be  material,  349. 

invention  in,  in  design  patents,  37. 

of  old  devices,  having  a  new  mode  of  operation,  26,  37. 

of  old  devices,  having  old  mode  of  operation,  37. 

parts  need  not  co-operate  all  the  time,  33. 

patentability  of,  26,  33. 

Comity 

between  courts  on  questions  of  fact,  635. 
between  courts  on  questions  of  law,  634. 
procedure  where  patent  held  valid  in  one  circuit  and  invalid 

in  another,  635. 
rule  in  Second  Circuit,  635. 
rule  in  Sixth  Circuit,  635. 

Commissioner  of  Patents 

appeals  to,  from  board  of  examiners-in-chief,  132. 

appeals  from,  to  Court  of  Appeals  of  District  of  Columbia,  132. 

erroneous  decision  of,  when  remedied  by  reissue,  220. 

force  of  decision  of,  in  application  cases,  148. 

force  of  decision  of,  in  extension  cases,  266. 

force  of  decision  of,  in  interference  cases,  142,  318. 

force  of  decision  of,  in  reissue  cases,  221. 

Common  Carriers 

patented  things  subject  to  law  of,  155. 


INDEX  1029 

(The  references  are  to  the  sections) 

Common  Law 

confers  no  paramount  right  in  inventions,  149. 

Complainant 

death  of,  pendente  lite,  627. 

evidence  in  chief  of,  636. 

exceptions  of,  to  master's  report,  749. 

who  may  be,  in  patent  cases,  394-400,  574. 

Compositions  of  Matter 

claims  in  specifications  of,  119. 
distinguishable  from  manufactures,  19. 
how  reduced  to  practice,  141a. 
patents  for,  how  infringed,  369-373. 
prerequisites  of  patentability  of,  18. 
specimens  of,  128. 
subjects  of  patents,  1. 

Compromise 

money  paid  in,  no  criterion  of  damages,  559. 

Conception 

of  invention,  70,  141a. 

Conflict 

patent  held  valid  in  one  circuit  and  invalid  in  another,  635. 

Conformity  Act 

Federal,  relevant  to  practice,  421. 

Congress 

power  of,  to  promote  progress  of  science  and  useful  arts,  1. 
practice  of,  in  granting  extensions,  257. 

Conjoint  Use 

allegation  of,  of  two  or  more  patents,  417. 

Consideration 

partial  or  total  failure  to  pay,  for  assignment,  276. 


L030  INDEX 

(The  references  are  to  the  sections) 

Constitution  of  the  United  States 

foundation  of  United  States  patents,  1,  150. 

Construction 

See  "  Claims  ",  "  Letters  Patent." 

of  assignments,  278. 

of  claims,  functional,  183. 

of  claims  in  the  light  of  the  state  of  the  art,  184. 

of  claims  narrowly,  when  necessary  to  save  their  validity,  185. 

of  claims,  not  by  artificial  rules,  117a. 

of  letters  patent,  181. 

of  letters  patent  according  to  contemporaneous  laws,  188. 

of  letters  patent  after  disclaimer,  207. 

of  letters  patent  in  the  light  of  contemporaneous  construction  of 

the  inventor,  187. 
of  letters  patent  in  the  light  of  Patent  Office  restrictions  and 

other  actions,  187,  187«. 
of  letters  patent  in  the  light  of  expert  testimony,  189,  500. 
of  letters  patent  on  motions  for  preliminary  injunctions,  676. 
of  letters  patent,  question  of  law,  189. 
of  letters  patent  with  proper  liberality,  185. 
of  letters  patent  with  proper  strictness,  186. 
of  licenses,  306. 
of  reissues,  248. 

of  title  papers  on  motions  for  preliminary  injunctions,  675. 
questions  of,  are  for  the  judge,  189. 

Contempt  of  Court 

how  ascertained,  708,  709. 
how  punished,  710. 

Continuation 

of  abandoned  application,  93,  145. 

Contracts 

letters  patent  construed  as,  189. 

Contribution 

between  joint  infringers,  531. 


INDEX  1031 

(The  references  are  to  the  sections) 

Contributory  Infringement 

by  sale  of  repair  parts  in  violation  of  license  restriction,  302a. 
persons  liable  for,  404-407. 
profits  recoverable,  712. 

Corporations 

as  defendants  in  patent  cases,  401,  409. 

as  patentees,  171. 

assignments  of  patents  to,  275. 

consolidated,  as  defendants,  416. 

consolidated,    invoking   licenses   given   to   their   constituents, 

310. 
consolidated,  succeeding  to  patent  rights  of  their  constituents, 

285. 
dissolution  of,  pendente  lite,  700. 
how  mentioned  in  declarations  and  bills,  422,  578. 
officers  of,  as  joint  defendants  with,  410. 
organized  by  assignor  of  patent  estopped  to  deny  validity  of 

patent  sued  upon,  469. 
when  liable  for  infringement  by  their  subsidiaries,  410. 
where  suable  for  infringements  of  patents,  389. 

Costs 

in  cases  of  disclaimer,  205,  208,  543,  656. 

in  cases  of  new  trials,  539. 

in  cases  of  rehearings,  647. 

in  cases  of  reversals  of  decrees,  656. 

in  equity,  6576. 

in  favor  of  whom  recoverable,  543,  545. 

may  include  what,  544-549. 

on  amendment  of  bills,  586. 

taxed,  how,  544-549,  656. 

where  equity  refuses  to  take  jurisdiction,  594. 

Counterclaim 

when  may  be  set  out  in  answer,  316,  59 1&. 

Counties 

as  defendants  in  infringement  suits,  401. 


L032  INDEX 

(The  references  are  to  the  sections) 

Courts 

comity  between,  on  questions  of  fact,  035,  and  law,  634. 

district  bills  in,  to  compel  issue  of  letters  patent,  134. 

district,  jurisdiction  of,  over  patent  actions  against  government 

agents,  393. 
district,  titles  of,  422,  577. 

having  original  jurisdiction  in  actions  for  infringement,  379. 
having  jurisdiction  in  qui  tarn  actions,  331. 
having  jurisdiction  to  grant  injunctions,  658. 
having  jurisdiction  to  repeal  patents,  323. 
having  appellate  jurisdiction,  133,  144,  550,  644a,  654,  696a. 

Court  of  Appeals  of  District  of  Columbia 

appeals  from,  to  Supreme  Court  of  United  States,  657a. 
appeals  to,  from  Supreme  Court  of  District  of  Columbia,  144, 

654. 
writ  of  error  from,  to  Supreme  Court  of  District  of  Columbia, 

550. 
writ  of  error  to,  from  Supreme  Court  of  United  States,  550. 

Court  of  Claims 

jurisdiction  of,  in  certain  patent  cases,  157,  391,  392. 

Coxe,  Judge 

opinion  on  bills  to  restrain  speech  and  the  press,  585a. 

Creditors'  Bills 

patent  rights  subject  to,  156. 
titles  transferred  by,  289. 

Cross  Appeals 

to  Circuit  Court  of  Appeals,  655. 

Cross  Bills 

not  required  in  interference  actions,  316. 
practice,  how  affected  by  30th  Equity  Rule,  316. 
subject  of,  may  be  set  out  in  answer,  5916. 

Curtis,  Justice 

opinion  on  invention,  33. 

opinion  on  mode  of  operation,  346. 


INDEX  1033 

(The  references  are  to  the  sections) 

Damages 

account  of,  how  taken,  .">73. 

accruing  before  surrender  and  reissue,  231. 

actual,  not  lessened  by  ignorance  of  patent,  569. 

decrees  for,  573. 

evidences  of,  502,  565,  636. 

excessive  assessment  of,  how  remedied,  539. 

exemplary,  567. 

for  infringement  of  design  patents,  571a. 

for  infringement  by  making,  564. 

for  infringement  by  making  and  selling,  563. 

for  infringement  by  making  and  using,  561. 

for  making,  using  or  selling  before  patent  issued,  not  recover- 
able, 158. 

for  unfair  competition,  when  may  be  awarded  in  infringement 
suit,  569. 

generic  measure  of,  555. 

how  stated  in  declarations,  436. 

include  no  counsel  fees  or  other  expenses  of  litigation,  570. 

increased,  568. 

interest  on,  571. 

jurisdiction  of  equity,  to  assess,  573. 

measures  of,  555-563. 

no  measure  of  profits,  716. 

nominal,  563,  564. 

not  measured  by  what,  559,  560. 

not  recoverable  in  absence  of  actual  or  constructive  notice  of 
infringement,  579. 

reduction  of  prices  and  of  sales,  563. 

remote  consequential,  566. 

resulting  to  defendants  from  improper  injunctions,  696. 

satisfaction  of  judgment  for,  releases  infringing  articles,  314. 

when  measured  by  royalties,  562. 

Daniel,  Justice 

opinion  on  ethical  character  of  patents,  153. 

Dates 

date  of  issue  presumptive  date  of  invention,  69. 
of  applications,  how  proved,  129. 


1034  INDEX 

(The  references  are  to  the  sections) 

Dates — (Continued.) 

of  applications,  significance  of,  180a. 

of  drawings,  models,  and  disclosure,  141c. 

of  invention,  how  proven,  510. 

of  invention,  the  only  issue  in  interference  actions,  317. 

of  invention,  to  avoid  anticipation,  weight  of  evidence  required, 
76. 

of  patented  inventions,  how  fixed  and  how  proved,  60,  69,  70, 
510. 

of  unpatented  inventions,  when  fixed  by  aid  of  abandoned  appli- 
cations, 59. 

Dealers 

when  suits  against  may  be  stayed,  705. 

Declarations 

commencement  of,  422. 

conclusion  of,  437. 

degree  of  correctness  required  in,  438. 

in  trespass  on  the  case,  422-438. 

statement  of  right  of  action  in,  423-436. 

title  of  court  in,  422. 

title  of  term  in,  422. 

venue  in,  422. 

when  demurrable  in  patent  actions,  483. 

Decrees 

action  of  Circuit  Court  of  Appeals  upon,  656. 

appeals  from,  644a,  654,  696a. 

by  consent  of  defendants  when  injunction  is  based  on,  709. 

consent,  not  foundation  of  preliminary  injunctions  against  third 

parties,  672. 
final,  when  entered,  649. 
for  pecuniary  recoveries,  573. 

how  assailable  in  the  Circuit  Court  of  Appeals,  655. 
in  interference  actions,  320. 
interlocutory,  644. 
interlocutory,  appeal  from  by  complainant  where  part  of  claims 

held  invalid  and  patent  valid,  654. 


INDEX  1035 

(The  references  axe  to  the  sections) 

Decrees — (Continued.) 

interlocutory,  not  pleadable  as  res  judicata,  468. 

interlocutory,  when  including  orders  for  permanent  injunctions, 
697. 

performance  of,  before  filing  bills  of  review,  650. 

pro  confesso,  pleadable  as  res  judicata,  468. 

pro  confesso,  when  foundation  of  right  to  preliminary  injunc- 
tions, 671. 

reversal  of,  by  Circuit  Court  of  Appeals,  resulting  in  dismissal 
of  bill,  704. 

where  disclaimers  are  found  necessary,  209. 

where  patent  held  valid  in  one  circuit  and  invalid  in  another, 
635. 

Dedication  to  the  Public 

of  inventions  described  in  specification  but  not  claimed,  176,  186. 

Defective 

meaning  of  the  word,  in  the  law  of  reissues,  217. 

Defences 

based  on  conspiracy  in  restraint  of  trade,  591a. 

based  on  expiration  of  patent,  441. 

based  on  omission  to  mark  "  patented,"  441. 

based  on  repeal  of  patent,  441. 

in  respect  of  their  classification,  441. 

in  respect  of  special  pleading,  442. 

laches,  how  set  up,  597. 

non-invention,  may  be  acted  on  by  the  court  at  its  own  instance 
when  appearing  plainly,  599. 

the  twenty-seven,  440,  591. 

those  pleadable  by  the  general  issue,  with  notice  of  special  mat- 
ter, 443. 

to  bills  in  equity,  588. 

to  bills  in  the  nature  of  supplemental  bills,  631. 

to  motions  for  preliminary  injunctions,  677-684. 

to  supplemental  bills,  631. 

where  licensee  is  sued  as  infringer,  309. 

which  assail  reissues,  441. 

which  deny  validity,  441. 


1030  INDEX 

(The  references  are  to  the  sections) 

Defendants 

aliens  as,  in  what  district  suit  brought,  389. 

assignees  for  creditors  as,  401. 

death  of,  pendente  lite,  627,  700. 

doings  of,  how  proved  by  plaintiffs,  497. 

evidence  in  chief,  503-534. 

exceptions  of,  to  masters'  reports,  746-748. 

in  actions  at  law,  401-416. 

in  actions  in  equity,  401-416,  575. 

in  patent  actions  generally,  401-416. 

joint  infringers  as,  407. 

joint-stock  association  as,  408. 

manufacturer  defending   suit  against  dealer  may  be  made  a 

defendant,  407. 
receivers  as,  401. 

transferees  of  defendant's  business  pendente  lite,  407. 
trustees  in  bankruptcy  as,  401. 
where  suable  for  infringement,  389,  390 

Degree 

change  of,  in  respect  of  patentability,  31,  31a. 

Demurrers  in  Actions  at  Law 

dangers  of,  486. 

function  of,  482. 

to  declarations,  482,  483. 

to  pleas,  482,  484. 

to  rejoinders,  482. 

to  replications,  482. 

Demurrers  and  Motions  to  Dismiss  in  Actions  in  Equity 

seldom  sustained  when  based  on  invalidity  and  non-infringement, 

588. 
setting  up  laches,  597. 
setting  up  non-jurisdiction  of  equity,  594. 
sustaining  to  bills,  649. 

take  precedence  of  motions  for  preliminary  injunctions,  663. 
to  bills,  588,  594,  597,  598,  599,  612,  613,  615,  617,  620,  622. 
to  bills  in  the  nature  of  supplemental  bills,  631. 
to  supplemental  bills,  631. 


INDEX  1037 

(The  references  are  to  the  sections) 

Depositions 

in  actions  at  law,  535. 

objections  to,  535. 

used  in  cases  other  than  those  in  which  taken,  640. 

Descriptions 

addressed  to  those  skilled  in  the  art,  174. 

defective,  218. 

errors  in,  175. 

excess  of,  175. 

fullness  of,  174,  175. 

in  general,  111,  115. 

insufficient,  218. 

need  not  be  changed  in  cases  of  disclaimer,  207. 

omissions  in,  175. 

should   set   forth    alternative    or    preferable   constructions   or 

processes,  185. 
vague,  how  affecting  letters  patent,  178. 

Designs 

claims  for,  120a. 

combination  of  old  elements,  37. 

extensive  use  evidence  of  invention,  40. 

how  reduced  to  practice,  141a. 

invention  necessary,  23. 

made  up  of  old  elements  may  involve  invention,  37. 

must  be  ornamental,  22. 

must  possess  novelty,  63. 

need  not  to  be  otherwise  useful,  22. 

new  and  analogous  use  not  invention,  38. 

not  invention  to  change  size  of,  31. 

novelty  of,  64. 

on  whose  invention  patentable,  21. 

statutory  provisions,  20-22. 

subjects  of  patents,  20. 

utility,  22,  77. 

Design  Patents 

damages  for  infringement  of,  571a. 
description  in  specification,  115,  174. 


1038  INDEX 

(The  references  are  to  the  sections) 

Design  Patents — (Continued.) 
duration  of,  162. 
evidence  of  invention  in,  40. 
fees  for,  125. 
how  infringed,  375. 

new  and  ornamental  shape  alone  sufficient,  77. 
profits  for  infringement  of,  723a. 

Destruction 

of  infringing  articles,  573a,  644. 

Difference 

what  degree  of,  inconsistent  with  negation  of  novelty,  57. 

Dignity 

of  inventions,  152. 

Diligence 

in  prosecuting  applications,  only  standard  of  is  statutory  limita- 
tion, 92,  146. 

necessary  in  making  application  as  between  two  or  more  in- 
ventors, 70,  91. 

Directors 

of  corporations  as  defendants,  410,  411,  414,  415. 

Disclaimers 

as  documents,  193. 
based  on  mistakes  of  fact,  195. 
based  on  mistakes  of  law,  196. 
causes  of  necessity  for,  193. 
costs  in  cases  of,  205,  543,  656. 
decrees,  in  cases  of  necessity  for,  209. 
delay  to  file,  when  beginning,  204. 
effect  of,  on  pending  actions,  193. 
errors  which  justify,  194. 
errors  which  do  not  justify,  197. 
filed  by  part  owner,  206. 
filed  pending  suit,  208. 


INDEX  1039 

(The  references  are  to  the  sections) 

Disclaimers — {Continued.) 
function  of,  197. 

how  affected  by  fraudulent  or  deceptive  intention,  202. 
how  far  available,  198,  199. 
how  prepared,  198. 
how  stated  in  declarations,  430. 
in  respect  of  immaterial  claims,  200. 
letters  patent,  how  construed  after,  207. 
need  not  change  description,  207. 
obviate  a  rigorous  rule  of  the  common  law,  203. 
of  equivalents,  372. 
of  reissue  claims,  201. 
statements  in,  206. 
statutory  authorization  of,  192. 

subjects  of,  not  reclaimable  by  reissue  or  otherwise,  209. 
unreasonable  delay  to  file,  203,  208. 

unreasonable  delay  to  file,  how  pleaded  in  actions  at  law,  456. 
unreasonable  delay  to  file,  how  pleaded  in  actions  in  equity,  609. 
unreasonable  delajr  to  file,  how  proved,  521. 
whether  necessary  before  decree  entered,  209. 
working  abandonment  of  invention,  90. 

Disclosure 

of  inventions,  70,  141a. 

Discontinuation 

of  actions  in  equity,  633. 

Discovery 

patent-law,  meaning  of  the  word,  2. 

District  Courts  of  the  United  States 

jurisdiction  of,  in  qui  tarn  actions,  324,  331. 
See  "Circuit  Courts." 

Districts 

wherein  defendants  may  be  sued,  389,  390. 

Divisional  Applications 

date  from  filing  original,  129. 


1040  INDEX 

(The  references  are  to  the  sections) 

Documentary  Evidence 
when  introduced,  641. 

Double  Patenting 

defence  of,  180a. 
how  pleaded,  at  law,  458. 
how  pleaded,  in  equity,  611. 
how  proved,  523. 

Double  Use 

not  invention,  38. 

Drawings 

amendment  of,  138,  214. 

constitute  part  of  letters  patent,  172. 

description  of,  in  specification,  111,  114. 

in  prior  patents  or  printed  publications,  56. 

may  aid  construction  of  claims,  182. 

may  constitute  birth  of  subsequently  patented  invention,  70, 

141a. 
unpublished,  never  negative  novelty,  61. 
what  must  show,  126. 
when  required,  126. 

Due  Process  of  Law 

meaning  of  the  phrase,  151. 
statutes  are  not,  158. 

Duplication 

in  respect  of  patentability,  34. 

Duration 

of  patents,  162-163. 

Electric  Light  Patent 
Edison,  31a. 

Employees 

as  defendants,  403. 


INDEX  1041 

(The  references  are  to  the  sections) 

Employers 

as  defendants,  404. 

as  implied  licensees  of  their  employees'  inventions,  313a. 

English 

decisions,  634. 
statutes,  541. 

Equity 

hearings  in,  632. 

injunctions  in,  572. 

jurisdiction  of,  in  infringement  cases,  572,  592,  593. 

jurisdiction  of,  in  infringement  cases,  not  dependent  on  prior 

adjudication  at  law,  595. 
jurisdiction  of,  over  interfering  patents,  316. 
jurisdiction  of,  to  repeal  patents,  322. 

jurisdiction  of,  where  patent  has  expired  since  bill  filed,  592. 
laches  a  defence  in,  591,  596. 
non-jurisdiction  of,  591,  592. 
non-jurisdiction  of,  how  set  up,  594. 
profits  or  damages  recoverable  in,  573,  711. 
specific  performance  of  contracts  to  assign  future  inventions, 

276a. 

Equivalents 

among  elements  of  machines  and  manufactures,  350. 

among  elements  of  processes,  338,  369. 

among  ingredients  of  compositions  of  matter,  370. 

defined,  354. 

dependent  on  functions,  352. 

dependent  on  ways  of  performing  functions,  353. 

disclaimed,  372. 

element  of  age  in,  354. 

in  primary  and  in  secondary  inventions,  359,  362. 

need  not  be  mentioned  in  patent,  350. 

range  of,  broader  in  meritorious  invention,  362. 

range  of,  commensurate  with  scope  of  invention,  359. 

substitution  of,  not  averting  infringement,  350. 

substitution  of,  not  invention,  36. 


1042  INDEX 

(The  references  are  to  the  sections) 

Equivalents — (Continued.) 
tests  of,  362. 

where  claimable  in  reissues,  when  not  described  or  claimed  in 
originals,  247. 

Errors 

of  judge  or  jury,  when  ground  for  new  trial,  539. 
which  justify  disclaimers,  194. 

Estates 

in  patent  rights,  274a. 

Estoppel 

See  "Res  Judicata." 

as  against  licensees,  307,  309. 

by  assignor  to  deny  validity,  469. 

by  assignor  to  deny  validity,  scope  of,  172,  469. 

by  corporation  organized  by  assignor,  469. 

by  infringer  to  deny  utility,  85. 

by  matter  of  deed,  469. 

by  matter  in  pais,  313. 

by  matter  of  record,  468. 

classes  of,  467. 

conveying  title,  275. 

in  actions  at  law,  440,  467. 

in  actions  in  equity,  591,  621. 

in  favor  of  purchasers  from  trustees  and  receivers,  290. 

in  interferences,  141. 

no  estoppel  on  assignor  to  prove  prior  art,  469. 

on  motions  for  preliminary  injunctions,  683. 

pleaded  how,  in  actions  at  law,  470.  ' 

pleaded  how,  in  actions  in  equity,  621. 

proved  how,  533. 

working  implied  license,  313. 

Eviction 

of  licenses,  307. 

Evidence 

before  masters,  740,  741. 


[NDEX  1043 

(The  references  are  to  the  sections) 

Evidence — (Continued.) 

complainant's,  in  chief,  636. 

defendant's,  in  chief,  503-534. 

documentary,  in  equity  cases,  641. 

ex  parte  experiments,  value  of,  as,  498. 

how  far  to  be  set  forth  in  bills  of  exceptions,  551,  552. 

in  disproof  of  infringement,  when  unnecessary,  532. 

in  equity  cases,  636,  637. 

in  interferences,  141. 

in  interference  actions,  318. 

newly  discovered,  when  ground  for  new  trial,  539. 

newly  discovered,  when  ground  for  rehearing,  647. 

newly  discovered,  when  ground  for  bill  of  review,  652. 

objections  to,  before  masters,  741. 

objections  to,  for  want  of  pleading,  600. 

objections  to,  when  to  be  made,  535. 

of  abandonment,  108. 

of  absence  of  inadvertence,  accident,  and  mistake,  522. 

of  actual  abandonment,  512. 

of  constructive  abandonment,  513. 

of  damages,  502,  565. 

of  date  of  invention,  510. 

of  deceitfully  lacking  or  excessive  specification,  518. 

of  estoppel,  533. 

of  experts,  498. 

of  expiration  of  patent  before  end  of  apparent  term,  527. 

of  facts  to  sustain  defence  in  Miller  v.  Brass  Co.,  523. 

of  facts  to  sustain  defence  in  Miller  v.  Eagle  Co.,  525. 

of  infringement,  497-501. 

of  joint  invention  for  sole  patent,  516. 

of  lack  of  identity  between  application  and  letters  patent,  514. 

of  lack  of  identity  between  letters  patent  and  reissue,  459,  524. 

of  licenses,  530. 

of  marking  patented,  496. 

of  non-infringement,  532. 

of  non-infringement  by  secret  process,  532. 

of  not  being  a  proper  subject  of  a  patent,  504. 

of  omission  to  mark  "  patented,"  528. 

of  prior  knowledge  or  use,  508. 


KMI  INDEX 

(The  references  are  to  the  sections) 

Evidence — {Continued.) 
of  prior  patents,  500. 
of  prior  printed  publications,  507. 

of  prior  state  of  the  art,  admissible  under  general  issue,  460. 
of  profits,  030,  740. 
of  release,  531. 
of  repeal  of  patent,  526. 
of  res  judicata,  533. 
of  sole  invention  for  joint  patent,  517. 
of  surreptitious  or  unjust  obtaining  of  patent,  515. 
of  title,  495. 

of  unreasonable  delay  to  file  disclaimer,  521. 
of  validity,  letters  patent  prima  facie  evidence,  491. 
of  want  of  invention,  505. 
of  want  of  novelty,  500-510. 
of  want  of  title,  529. 
of  want  of  utility,  511. 
plaintiff's,  in  chief,  491. 
rules  of,  in  interferences,  141. 
rules  of,  in  patent  actions,  490. 
that  claims  are  indistinct,  520. 
that  specification  is  insufficient,  519. 
to  rebut  defence  of  laches,  030. 
to  rebut  defence  of  want  of  novelty,  509,  510. 
to  carry  back  date  of  invention,  70. 
to  support  defence  of  laches,  037. 
to  support  plea  of  statute  of  limitation,  534. 
weight  of,  to  prove  anticipation,  76. 

Examination 

of  applications,  130. 

Examiners-in-Chief 

appeals  to  board  of,  132. 

Exceptions 

bills  of,  540,  551-554. 

to  instructions,  and  to  refusals  to  instruct,  553,  554. 

to  masters'  reports,  745-750. 


INDEX  1045 

(The  references  are  to  the  sections) 

Executors  and  Administrators 

applying  for  letters  patent,  110,  171. 

applying  for  Patent-Office  extensions,  261. 

applying  for  reissues,  250. 

as  complainants  or  plaintiffs,  396. 

as  defendants,  627. 

filing  disclaimers,  206. 

oath  of,  to  applications,  123. 

reissue  granted  to  one  of  several,  251. 

Executions 

patent  rights  not  subject  to,  156. 

Experimental  Use 

distinguished  from  "  public  use,"  95. 

Experiments 

ex  parte,  value  of  as  evidence,  498. 
unsuccessful  and  abandoned,  63,  86. 

Expert  Witnesses 

correction  of,  638. 

cross-examination  of,  501. 

hypothetical  questions  put  to,  499. 

testimony  of,  affecting  construction  of  letters  patent,  189,  500. 

testimony  of,  on  motions  for  preliminary  injunctions,  676. 

testimony  of,  regarding  the  state  of  the  art,  500. 

testimony  of,  relative  to  infringement,  498. 

testimony  of,  relative  to  non-infringement,  532. 

testimony  of,  when  proper  and  when  improper,  189. 

Expiration  of  Patent 

See  "Foreign  Patent,"  "Terms  of  Patents." 

by  expiration  of  foreign  patent,  163. 
how  pleaded  in  actions  at  law,  462. 
how  pleaded  in  actions  in  equity,  615. 
how  proved,  527. 

Extensions 

application  for  Patent-Office  extension,  261. 


104G  INDEX 

(The  references  are  to  the  sections) 

Extensions — (Continued.) 

assignability  of  inchoate  right  to  Patent-Office  extension,  273. 

assignment  of,  280. 

constitutional  foundation  of,  255. 

congressional,  256. 

congressional,  how  affected,  257. 

congressional,  whom  for  benefit  of,  258. 

facts  justifying  Patent-Office  extension,  267. 

fraud  in  procuring  or  granting  Patent-Office  extension,  269. 

how  stated  in  declarations,  431. 

Patent-Office  extensions,  259. 

Patent-Office  extensions,  applications  for,  261. 

Patent-Office  extensions,  certified  how,  265. 

Patent-Office  extensions,  grantable  when,  262,  264. 

Patent-Office  extensions,  inventor's  rights  therein,  263. 

Patent-Office  extensions,  operation  of,  on  existing  specimens  of 

the  invention,  270,  271. 
Patent-Office  extensions,  proceeding  on  applications  for,  268. 
Patent-Office  extensions,  repeal  of,  269. 
Patent-Office  extensions,  statutory  foundation  of,  260. 

Faults 

which  call  for  disclaimers,  193,  194. 
which  cause  patents  to  be  reissuable,  218. 

Fees 

attorneys',  taxable  as  costs,  545. 
clerks',  taxable  as  costs,  546. 
commissioners',  taxable  as  costs,  547. 
first  Patent-Office,  109,  125. 
final  Patent-Office,  103,  125,  170. 
witness,  taxable  as  costs,  548. 

Field,  Justice 

opinion  on  jurisdiction  of  State  courts,  380. 

Fifth  Amendment 

to  Constitution  of  United  States,  151,  158. 


'    INDEX  1047 

(The  references  are  to  the  sections) 

Finding 

of  judge,  when  trying  action  at  law  without  a  jury,  540. 

"  For  the  Purpose  Set  Forth  " 

nature  of  the  phrase,  in  a  claim,  182. 

Foreign  Country 

conception  of  invention  in,  141a. 

infringement  by  sale  in,  707,  708. 

knowledge  or  use  in,  prior  to  patentee's  invention,  54. 

printed  publication  in,  more  than  two  years  prior  to  patentee's 

application,  104a. 
public  use  or  sale  in,  more  than  two  years  prior  to  patentee's 

application,  101. 

Foreign  Patent 

See  "Terms  of  Patents,"  "  Expiration  of  Patent." 

application  for,  operating  toward  constructive  abandonment, 

104a. 
operation  on  novelty,  54,  55. 
operation  to  constructive  abandonment,  104a. 

Forfeiture 

not  favored  in  the  law,  108. 
of  licenses,  308,  309. 

Forgotten  Acts 

do  not  negative  novelty,  71. 

Form 

as  affecting  questions  of  infringement,  363-368. 
as  affecting  questions  of  invention,  41. 

Formal  Requisites 

letters  evidence  of  compliance  with,  491. 

Formalities  of  Application 
See  "  Letters  Patent." 


104S  INDEX 

(The  references  are  to  the  sections) 

Fraud 

action  for,  is  procuring  patent  on  another  invention,  427a. 

in  granting  or  procuring  letters  patent,  321. 

in  granting  or  procuring  Patent-Office  extensions,  269. 

remedy  for,  in  granting  or  procuring  letters  patent,  extensions, 

or  reissues,  321-323. 
selling  patents  by  means  of,  284. 

French  Patents 

when  effective  to  negative  novelty,  55 

Functions 

considered  in  respect  of  equivalents,  352. 

difference  of,  consistent  with  identity  of  invention,  180a. 

good,  in  wrong  places,  84. 

not  subjects  of  patents,  3. 

performed  in  "  substantially  the  same  way,"  353. 

stated  in  claims,  117a,  176,  183,  220. 

thought  by  some  to  be  good,  and  by  others  to  be  evil,  83. 

which  sometimes  work  good,  and  sometimes  evil,  82. 

Future  Inventions 

contracts  to  assign,  276a. 

German  Patents 

when  effective  to  negative  novelty,  55. 

Gilbert,  Judge 

opinion  on  invention,  35. 

Government  of  the  United  States 

contractors  with,  whether  liable  for  infringement,  157. 

has  no  unpurchased  right  to  patented  inventions,  157. 

not  liable  to  any  action  for  infringement,  392. 

officers  of,  when  liable  for  infringement  by  government  use,  157. 

Grants 

of  rights  under  letters  patent,  287. 
operation  of,  extra  territorially,  288. 


INDEX  1049 

(The  references  are  to  the  sections) 

Grantees 

joining  in  actions  for  infringement,  399. 
need  not  join  in  surrender  and  reissue,  252. 
rights  of,  under  reissues,  253. 

Grier,  Justice 

opinion  on  mode  of  operation,  344. 

Grosscup,  Judge 

opinion  of,  on  inventions,  152a. 

Hall,  Judge 

opinion  on  abandonment  of  patents,  107. 

Hamilton,  Alexander 

opinion  on  jurisdiction  of  State  courts,  380. 

Hearings 

final,  633. 

interlocutory,  633. 

of  motions  for  preliminary  injunctions,  662. 

Identity 

degree  of,  involved  in  constructive  abandonment,  98. 

degree  of,  involved  in  novelty,  62. 

lack  of,  between  application  of  letters  patent,  how  pleaded  in 
actions  at  law,  450. 

lack  of,  between  application  of  letters  patent,  how  pleaded  in 
actions  in  equity,  603. 

lack  of,  between  application  and  letters  patent,  how  proved,  514. 

lack  of,  between  letters  patent  and  reissue,  how  pleaded  in  ac- 
tions at  law,  459. 

lack  of,  between  letters  patent  and  reissue,  how  pleaded  in  ac- 
tions in  equity,  612. 

lack  of,  between  letters  patent  and  reissue,  how  proved,  524. 

presence  of,  between  several  patents  to  one  inventor,  how 
pleaded  in  actions  at  law,  460. 

presence  of,  between  several  patents  to  one  inventor,  how  pleaded 
in  actions  in  equity,  613. 


!(>■)()  INDEX 

(The  references  are  to  the  sections) 

Identity— (Continued.) 

presence   of,   between   .several    patents   to   one   inventor,    how 

proved,  525. 
presence  of,  between  several  patents  to  one  inventor,  how  tested, 
180a. 

Ignorance 

of  anticipating  matter  never  averts  negation  of  novelty,  73. 
of  letters  patent  never  averts  judgment  or  decree  for  infringe- 
ment, 377,  569. 

Impounding  Infringing  Articles 

pending  suit,  when  proper,  573a. 

Improvement 

a  subject  of  a  patent,  1. 
may  or  may  not  be  invention,  16. 
may  or  may  not  infringe,  376. 
sorts  of,  16,  285. 

Inadvertence 

causing  necessity  for  disclaimers,  193. 
causing  reissuable  faults,  220. 

Inadvertence,  Accident,  and  Mistake 
absence  of,  how  proved,  522. 

Infringement 

after  interlocutory  decree,  how  brought  before  the  court,  708. 

beyond  the  jurisdiction  of  the  court,  389. 

by  devices  capable  of  non-infringing  use,  368a. 

by  making,  damages  for,  564. 

by  making  and  selling,  damages  for,  561. 

by  making  and  selling,  profits  derived  from,  717-723,  735. 

by  making  and  using,  damages  for,  561. 

by  selling  after  patent  expired  articles  made  before,  698. 

by  selling,  damages  for,  563. 

by  selling,  profits  derived  from,  724. 

by  using,  damages  for,  561. 


INDKX  li).")l 

(The  references  are  to  the  sections) 

Infringement — (Continued.) 

by  using,  profits  derived  from,  725-734. 

by  making,  by  using,  and  by  selling,  suable  in  one  action, 
417. 

cessation  of,  no  defence  to  a  motion  for  a  preliminary  injunc- 
tion, 67G,  701. 

cessation  of,  when  a  defense  to  an  injunction,  701. 

contributory,  404-407. 

danger  of,  how  proved,  676. 

denial  of,  how  pleaded  in  actions  at  law,  466. 

denial  of,  how  pleaded  in  actions  in  equity,  620. 

different  sorts  of,  how  treated  by  masters,  743. 

doubtful  questions  of,  not  decided  on  motions  for  attachment, 
708. 

duplication  of  parts,  347. 

extent  of,  ascertained  by  masters,  742. 

evidence  to  establish,  497-501,  636,  676. 

evidence  to  disprove,  532. 

how  stated  in  bills  of  complaint,  579. 

how  stated  in  declarations,  434,  435. 

ignorance  no  excuse  for,  377. 

intent,  676. 

negation  of,  how  proved,  532. 

of  design  patents,  375. 

of  mechanical  patents,  339-368. 

of  patents  for  compositions  of  matter,  369-373. 

of  patents,  involves  infringement  of  claims,  339. 

of  primary  patents,  359,  362. 

of  process  patents,  335-338. 

of  processes,  different  object  in  view,  338. 

of  processes,  when  steps  transposed,  338. 

of  processes,  none  by  purchase  of  product  of  infringement,  of 
process,  338. 

of  reissued  patents,  254. 

of  secondary  patents,  359,  362. 

of  two  or  more  terms  of  a  patent,  suable  in  one  action,  417. 

option  to  sue  for  infringement  or  for  royalty,  309. 

partly  unprofitable,  713. 

proof  of,  532. 


10")  2  INDEX 

(The  references  are  to  the  sections) 

Infringement  —(Continued.) 

proof  of,  or  of  danger  of,  on  motions  for  preliminary  injunc- 
tions, 676. 
questions  of,  as  affected  by  addition,  347,  369. 
questions  of,  as  affected  by  change  of  form,  363-368. 
questions  of,  as  affected  by  changes  made  for  purpose  of  evasion, 

368a. 
questions  of,  as  affected  by  degree  of  efficiency  of  infringing 

machine,  353. 
questions  of,  as  affected  by  improvement,  376. 
questions  of,  as  affected  by  later  patent  under  which  defendant 

is  operating,  362a. 
questions  of,  as  affected  by  manufacture  before  patent  issued, 

158. 
questions  of,  as  affected  by  mode  of  operation,  341-346. 
questions  of,  as  affected  by  nature  of  use,  340,  368a. 
questions  of,  as  affected  by  omission,  349,  369. 
questions  of,  as  affected  by  rearrangement  of  parts,  348. 
questions  of,  as  affected  by  results,  340. 
questions  of,  as  affected  by  separation  of  part,  349. 
questions  of,  as  affected  by  substitution  of  equivalents,  350, 

370,  370a,  371. 
questions  of,  as  affected  by  union  of  parts,  349. 
questions  of,  as  affected  by  uniting  two  or  more  elements,  349. 
questions  of,  as  affected  by  utility,  376. 
questions  of,  as  regards  sale  in  U.  S.  of  articles  patented  in 

foreign  country,  288. 
questions  of,  not  to  be  taken  to  Circuit  Court  of  Appeals  on 

certificates  of  division  of  opinion,  657. 
questions  of,  attended  to  first  by  courts  in  litigated  cases,  649. 
repeated,  suable  on,  in  one  action,  435. 
whether  sale  in  foreign  country  is,  288,  707,  708. 

Injunctions 

acquiescence  of  the  public  as  foundation  for  preliminary,  667- 

670. 
against  corporations,  upon  what  persons  binding,  708. 
against  multiplicity  of  suits,  705. 
against  threats  of  suit,  585a. 


INDEX  1053 

(The  references  are  to  the  sections) 

Injunctions — (Continued.) 

appeals  from,  644a,  696a. 

appeals  from   preliminary,  when   appellate  court  may  dismiss 

bill,  696a. 
averted  by  proof  of  estoppel,  683. 

averted  by  proof  of  expiration  or  repeal  of  patent,  681,  698. 
averted  by  proof  of  laches,  684. 
averted  by  proof  of  license,  682. 
averted  by  proof  that  patent  is  void,  679,  680. 
bills  for,  660. 

binding  on  whom,  407,  410,  696. 
bonds  pending  motions  for  preliminary,  663. 
consent  decree,  when  foundation  for  preliminary,  672,  709. 
decree,  pro  confesso  as  a  foundation  for  preliminary,  671. 
defences  to  preliminary,  when  set  up  in  answer,  694. 
defendant's  admission  of  validity,   when  foundation  for  pre- 
liminary, 673. 
description  in  preliminary,  702. 
dissolution  of,  because  of  abuse  by  plaintiff,  705. 
dissolution  of  permanent,  704. 
dissolution  of  preliminary,  659. 
duration  of,  in  general,  706. 

duration  of,  when  granted  by  district  judge  in  vacation,  707. 
form  of,  658«. 

foundation  of  right  to  preliminary,  665. 
hearing  of  motions  for  preliminary,  662. 
imperative  character  of  right  to  preliminary,  685. 
interference  decision,  when  foundation  for  preliminary,  674. 
jurisdiction  to  grant,  658,  696. 

manufacturer,  when  bound  by,  in  suit  against  dealer,  407. 
motions  for  preliminary,  662. 
motions  to  dissolve  preliminary,  692-694. 
motions  to  reinstate  dissolved  preliminary,  695. 
motions  to  dissolve  reinstated  preliminary,  695. 
motions  for  attachment  for  violation  of,  708-709. 
must  be  obeyed,  696. 

not  averted  by  existence  of  remedy  at  law,  689. 
not  averted  by  non-use  of  patent,  7 Ola. 
not  granted  on  trivial  infringements,  705. 


1054  INDEX 

(The  references  are  to  the  sections) 

Injunctions — (Continued.) 

not  granted  to  restrain  complainants  from  suing  third  parties, 
705. 

not  granted  to  restrain  complainants  from  warning  defendants' 
customers  against  infringement,  705. 

not  granted  to  restrain  issue  of  letters  patent,  134. 

notice  of  motions  for  preliminary,  661. 

obedience  to,  insisted  upon,  696. 

on  bills  in  interference  actions,  319. 

orders  for,  696. 

penalty  for  disobeying,  710. 

pending  judgment  in  interference  suits,  316. 

permanent,  not  averted  by  non-use  of  patent,  701a. 

permanent,  when  granted,  697. 

permanent,  when  postponed,  702. 

permanent,  when  refused,  698-700. 

permanent,  when  suspended  pending  appeal,  654,  703. 

postponement  of,  till  final  decree,  702. 

preliminary,  659. 

preliminary,  based  on  danger  of  infringement,  676. 

preliminary,  danger  of  irreparable  injury,  676. 

preliminary,  in  discretion  of  court,  696a. 

preliminary,  relative  benefits  of  parties  considered,  670. 

preliminary,  taking  effect  in  futuro,  685. 

preliminary,  when  averted  by  proof  that  acquiescence  was  col- 
lusive, 680. 

preliminary,  when  based  on  prior  adjudications,  666. 

proof  of  complainant's  title  a  necessary  element  in  right  to, 
675. 

proof  of  infringement,  or  danger  of  infringement,  a  necessary 
element  in  right  to,  676. 

strangers  to  suit,  when  bound  by,  410. 

successive  preliminary,  676. 

suspension  of,  pending  appeal,  696a,  703. 

suspension  of  motions  for  preliminary,  663. 

temporary  restraining  order  pending  motion  for  preliminary, 
664. 

territorial  scope  of,  707. 

to  restrain  actions  at  law,  705. 


INDEX  1055 

(The  references  are  to  the  sections) 

Injunctions — (Continued.) 

to  restrain  unauthorized  marking  of  patented  articles,  333. 

to  restrain  wrongful  declarations  of  forfeiture  of  licenses,  308. 

violations  of,  how  punished,  710. 

void  when  granted  without  jurisdiction,  696. 

when  averted  by  cessation  of  infringement,  701. 

when  averted  by  proof  that  patent  has  short  time  to  run,  592, 

702. 
when  granted  after  expiration  of  patent,  698. 
when  granted,  pro  confesso,  690. 
withdrawal  of  motions  for,  663. 
writ  of,  696,  708. 

"  In  Mechanism  "    • 

operation  of  the  phrase  in  a  claim,  182. 

Inoperativeness 

a  cause  of  reissuability,  216,  218,  219. 

Inspection 

of  defendant's  device,  when  permitted,  636. 

Instructions 

exceptions  to,  553,  554. 
how  reviewed,  552. 
to  be  given  in  writing,  537. 
what  must  embody,  537. 

Insufficient 

meaning  of  the  word  in  the  law  of  reissues,  217. 

Interest 

on  damages,  571. 
on  profits,  736. 

Interferences 

appeals  in,  141d. 

applications  in,  140,  141,  141a,  1416,  141c. 

burden  of  proof  in,  141. 


1050  INDEX 

(The  references  are  to  the  sections) 

Interferences — (Continued.) 

comparative  dates  in,  141a,  1416. 
conception  of  invention  in,  141a,  1416,  141c. 
decision  of,  141a,  142,  674. 

decision  in,  when  evidence  on  motion  for  preliminary  injunc- 
tion, 674. 
defined,  140. 

disclosure  of  invention  in,  141a,  141c. 
drawings  of  invention  in,  141a,  141c. 
estoppel  in,  141. 

evidence  in,  141,  141a,  1416,  141c. 
junior  applicant  in,  1416,  141c. 
laches  in,  141a,  141c. 
model  of  invention  in,  141a,  141c. 
questions  of  invention  and  utility  in,  141. 
question  of  novelty  not  in,  141. 
reduction  to  practice  in,  141a,  1416,  141c. 
rules  of  evidence  in,  141. 
senior  party  in,  141,  141c. 

Interference  Actions  in  Equity 

authorized,  316. 
decrees  in,  320. 
evidence  in,  318. 
hearings  in,  320. 
injunctions  in,  319. 
issues  in,  317. 
injunctions  pending,  316. 
parties  in,  316. 
questions  in,  317. 

Interfering  Patents 

causes  of,  315. 
defined,  315. 

Interrogatories 

as  part  of  bill,  under  former  practice,  581. 

as  to  what  matters  proper,  590d 

the  practice  generally  considered,  590c. 


INDEX  1057 

(The  references  are  to  the  sections) 

Invalidity 

eighteen  causes  of,  440,  441. 
when  a  cause  of  reissuability,  216 

Invention 

See  "Combination." 

absent  from  mere  aggregation,  32. 

absent  from  mere  change  in  degree,  31. 

absent  from  mere  duplication,  34. 

absent  from  mere  enlargement,  30. 

absent  from  mere  omission  of  parts,  35. 

absent  from  mere  substitution  of  equivalents,  36. 

absent  from  mere  substitution  of  superior  materials,  28. 

absent  from  mere  union  of  two  parts  making  one,  35. 

absent  from  new  combination  of  old  devices  having  no  new  mode 

of  operation,  37. 
absent  from  new  and  analogous  use  of  old  process  or  thing,  38. 
absent  from  product  of  mere  skill,  25. 
absent  from  mere  workmanship,  27. 
cheapness  of  construction,  when  evidence  of,  29,  31a. 
conception  of,  70,  141a,  141c. 
date  of,  69. 

date  of,  by  what  evidence  proven,  510. 
disclosure  of,  70,  141a,  141c. 
drawings  of,  70,  126,  141a,  141c. 
efficiency  over  prior  structures,  evidence  of,  29,  31a. 
evidence  of  want  of,  505. 
extensive  use,  when  evidence  of,  26,  40. 
form  no  criterion  of,  41. 
generally  a  question  of  fact,  23,  505. 
grades  of,  22. 
model  of,  70,  127,  14k/. 
necessary  to  patentability,  23. 
of  process,  may  be  valid  although  all  steps  old,  37. 
oral  disclosure  of,  effect,  70. 
patentable  but  once,  180a. 
prior  failures,  evidence  of  invention,  40. 

priority  of,  later  patent  of  earlier  application  date  admissible,  55. 
question  of,  as  affected  by  lack  of  commercial  success,  40. 


1058  INDEX 

(The  references  are  to  the  sections) 

Invention — {Continued.) 

question  of,  as  affected  by  mechanical  simplicity,  26,  42. 
question  of,  need  not  be  raised  by  pleadings  to  warrant  action 

by  the  court,  599. 
questions  of  presence  or  absence  of,  are  determined  by  negative 

rules,  24. 
questions  of  presence  or  absence  of,  are  questions  of  fact,  42. 
questions  of  presence  or  absence  of,  are  affected  by  the  state  of 

the  art,  43. 
questions  of  presence  or  absence  of,  are  sometimes  determined 

by  comparative  utility,  40. 
result  may  be  new  or  old,  26. 

results  from  flash  of  thought  or  from  long  study,  22. 
theory  of  operation  need  not  be  understood,  175. 
want  of,  how  pleaded  in  actions  at  law,  446. 
want  of,  how  pleaded  in  actions  in  equity,  599. 
want  of,  how  proved,  505. 

Inventions 

classification  of,  177a. 

plurality  of,  in  one  patent,  180,  183. 

"  Jail  "  Case 

Jacobs  v.  Baker,  17. 

Jenkins,  Judge 

opinion  on  bills  to  restrain  speech  and  the  press,  585a. 

Joint  Infringement 

facts  which  constitute,  407. 

profits  recoverable  in  cases  of,  712. 

recovery  for  separate  acts  of  infringement  in  suits  against,  406. 

Joint  Infringers 

as  defendants,  406. 
contribution  between,  531. 
releases  to  one  of  several,  531. 

Joint  Invention 

distinguished  from  sole  invention,  45,  46. 


INDEX  1 059 

(The  references  are  to  the  sections) 

Joint  Invention — (Continued.) 

distinguished  from  suggestions  to  sole  inventor,  47. 

for  sole  patent,  how  pleaded  in  actions  at  law,  452. 

for  sole  patent,  how  pleaded  in  actions  in  equity,  605. 

for  sole  patent,  how  proved,  516. 

for  sole  patent,  voids  the  patent,  50. 

for  sole  patent,  whether  validity  affected  by  assignment,  50. 

Joint  Patent 

for  sole  invention,  how  pleaded  in  actions  at  law,  452. 
for  sole  invention,  how  pleaded  in  actions  in  equity,  605. 
for  sole  invention,  how  proved,  517. 
for  sole  invention,  voids  the  patent,  51. 

Joint  Stock  Association 

each  member  liable  for  infringement  by  acts  of  the  association, 
408. 

Judges 

decide  questions  of  construction,  189,  499,  500. 
directing  juries  to  find  verdicts  for  defendants,  536. 
trying  actions  in  equity  with  juries,  642. 
trying  actions  at  law  without  juries,  540. 

Judgments 

by  default  pleadable  as  res  judicata,  468. 

for  amount  larger  than  verdict,  finding,  or  report,  542. 

for  costs,  289,  549,  635. 

when  and  how  entered,  542. 

Judicial  Notice 

of  persons  in  authority  in  the  Patent  Office,  172. 

in  respect  of  pleadings,  445. 

when  taking  the  place  of  evidence,  505,  599. 

Junior  Patent 

conformity  to,  of  defendant's  doings,  relevant  to  issue  of  in- 
fringement, 532. 

conformity  to,  of  defendant's  doings,  relevant  to  motions  for 
preliminary  injunctions,  687. 


I()()0  INDEX 

(The  references  are  to  the  sections) 

Juries 

instructions  to,  537. 

what  questions  are  for,  499,  500. 

when  directed  to  find  a  verdict  for  defendants,  536. 

Jurisdiction 

See  "Venue." 

consent  of  parties  may  confer,  389. 

in  interference  actions,  316. 

in  qui  tarn  actions,  331. 

objections  to,  when  waived  by  general  appearance,  389. 

of  Commissioner  of  Patents,  to  grant  extensions,  266. 

of  Commissioner  of  Patents,  to  grant  reissues,  211-221. 

of  Commissioner  of  Patents,  to  issue  letters  patent,  148,  178. 

of  District  Courts  over  actions  for  infringement  against  agents 

of  the  United  States  Government,  93. 
of  Court  of  Claims  in  patent  cases,  391,  392. 
of  courts  of  first  resort  in  patent  cases,  379. 
of  equity  in  patent  cases,  572,  573,  592,  593,  658,  689. 
of  equity,  where  patent  has  expired  since  bill  filed,  592. 
of  individual  Federal  courts,   of  first  resort  in   patent  cases, 

389. 
of  State  courts  to  enforce  or  set  aside  contracts  relevant  to 

patents,  388. 
original  in  patent  cases,  379. 
question  of  jurisdiction  of  State  courts  in  infringement  cases, 

380. 
territorial  extent  of,  of  courts  of  equity,  707,  708. 

Jury  Trials 

in  actions  at  law,  488. 
in  actions  in  equity,  632. 

Kent,  Chancellor 

opinion  on  jurisdiction  of  State  courts,  380. 

Knowledge 

fund  of,  required  by  inventors,  48. 
in  foreign  country,  54. 


INDEX  1061 

(The  references  are  to  the  sections) 

Knowledge — {Continued.) 

inventor  presumed  to  have,  of  state  of  the  art,  43. 

lack  of,  anticipating  matter,  on  the  part  of  patentees,  73. 

necessary  to  acquiescence,  312. 

of  patent  not  necessary  to  constitute  infringement,  377. 

public,  works  no  constructive  abandonment,  100. 

what  must  include,  in  order  to  negative  novelty,  72. 

Laches 

a  defence  in  equity,  591,  596. 

a  defence  to  a  motion  for  a  preliminary  injunction,  684. 

as  a  bar  to  an  accounting,  644. 

defence  of,  how  guarded  against,  597. 

how  set  up  as  a  defence,  597. 

in  bringing  suit  to  compel  issuance  of  patent,  134. 

in  interferences,  141a,  141c. 

lapse  of  time  alone  does  not  sustain  the  defence,  596. 

when  must  be  negatived  in  bill,  597. 

working  abandonment  of  application  and  invention,  145. 

working  abandonment  of  invention,  91. 

Lapse  of  Time 

before  applying  for  broadened  reissue,  226,  227. 
before  moving  for  preliminary  injunctions,  684. 

Law 

sources  of,  537,  634. 

Laws  of  Nature 

not  subjects  of  patents,  2. 

Lessors 

of  infringing  machines,  as  defendants,  405. 

Letters  Patent 

addressed  to  those  skilled  in  the  art,  174. 
alteration  of  by  Commissioner,  not  permissible,  172. 
apparently  in  force,  prima  facie  evidence  that  they  have  not 
expired  or  been  repealed,  494. 


1062  index 

(The  references  are  to  the  sections) 

Letters  Patent — (Continued.) 
are  contracts,  189. 
are  irrevocable,  321. 
as  documents,  172. 
bill  in  equity  to  compel  issue  of,  134. 
burden  of  proof  in  suit  to  compel  issue  of,  134. 
claims  of,  176,  177. 

conclusive  as  to  formal  requisite  to  issuance,  when,  491. 
constituents  of,  172. 
construction  of,  181. 
construction  of,  a  question  of  law,  189. 
constructive  notice  to  all  persons,  191. 
construed  according  to  contemporaneous  statutes,  188. 
construed  as  contracts,  189. 
construed  as  liberally  as  possible,  185. 
construed  broadly  where  invention  successful,  185. 
construed  in  light  of  acts  of  owner,  186a. 
construed  in  light  of  contemporaneous  construction  of  inventor, 

187. 
construed  in  light  of  co-pending  applications,  187,  187a. 
construed  in  light  of  expert  testimony,  189. 
construed  in  light  of  Patent  Office  restrictions,  187a. 
construed  in  light  of  prior  patent  referred  to  therein,  174. 
construed  in  light  of  the  state  of  the  art,  184. 
construed  narrowly  where  patent  not  used,  185. 
construed  to  save  patent  if  possible,  182. 
construed  with  proper  liberality,  185. 
construed  with  proper  strictness,  186. 
cover  all  uses  of  the  invention,  180. 
description  in,  affecting  constructions  of  claims,  182. 
duration  of,  162,  163. 
eight  hundred  thousand  granted,  191. 
errors  in,  when  fatal  to  validity  of,  172. 
extent  of,  160,  161. 
formalities  of  execution,  121,  122. 
four  hundred  thousand  in  force,  191. 
granted  to  whom,  110,  171. 
how  affected  by  vague  description  of  claims,  178. 
how  construed  after  disclaimer,  207. 


INDEX  1003 

(The  references  are  to  the  sections) 

Letters  Patent — {Continued.) 

how  construed  when  particular  feature  described  as  preferable, 

186. 
how  proven,  129,  506. 
how  set  out  in  declarations,  428. 

issued  more  than  six  months  after  allowance,  validity,  1 70. 
matters  of  public  record,  191. 
nature  of,  151-157. 

one  for  several  related  inventions,  180. 
only  one  for  one  invention,  180a. 
presumed  to  be  for  same  invention  as  application,  190. 
prima  facie  evidence  of  their  own  validity,  491. 
separate,  granted  for  different  parts  of  one  machine,  180. 
signed  by  whom,  172. 
surrender  of,  105. 
surreptitious  or  unjust  obtaining  of,  how  pleaded  in  actions  at 

law,  451. 
surreptitious  or  unjust  obtaining  of,  how  pleaded  in  actions  in 

equity,  604. 
territorial  extent  of  monopoly,  160,  707. 
the  description  in,  174,  175. 
theory  of  operation  need  not  be  understood,  175. 
uses  need  not  be  described  in  full,  175. 

valid  as  to  one  or  more  claims  while  void  as  to  the  residue,  177. 
when  may  cover  plurality  of  inventions,  180. 

Licenses 

arising  from  acquiescence,  312. 

arising  from  estoppel,  312,  313. 

arising  from  recovery  of  damages  or  profits,  314. 

as  defences  to  motions  for  preliminary  injunctions,  682. 

assignability  of,  310. 

construction  of,  306. 

defined,  274,  296. 

duration  of,  308. 

express,  with  implied  incidents,  297-301. 

express,  without  implied  incidents,  300,  302. 

forfeiture  of,  308,  309. 

from  one  of  several  mutual  owners,  305. 


1 1  Hi  I  IXDEX 

(The  references  are  to  the  sections) 

Licenses     {Continued.) 

Iimv  pleaded  in  actions  at  law,  465. 

Imw  pleaded  in  actions  in  equity,  618. 

how  proved,  530. 

how  restricted,  301,  302. 

implied  from  conduct,  312.  ; 

implied  from  employment,  313a. 

may  be  granted  at  any  time  after  application,  303. 

need  not  be  negatived  in  declarations,  434. 

need  not  be  negatived  in  plaintiff's  evidence  in  chief,  496. 

none  required,  to  buy  specimens  of  patented  things,  299. 

not  implied  from  purchase  in  foreign  country,  288. 

notice  of,  304. 

price  restrictions  in,  314a  et  seq. 

purely  implied,  311. 

recording  of,  304. 

surrender  of,  308. 

to  corporations,  310. 

to  one  of  several  joint  users,  305. 

to  partnerships,  310. 

use  restrictions  in,  314a  et  seq. 

written  or  oral,  303. 

Licensees 

how  suing  for  infringement  against  strangers,  400,  579. 

how  suing  patentee  or  his  assignee  for  breach  of  license,  400. 

need  not  join  in  surrender  and  reissue,  252. 

of  one  of  several  mutual  owners,  294,  305. 

shop  rights,  313a. 

when  estopped  from  denying  validity,  309. 

when  evicted,  307. 

when  sued  as  infringers,  309. 

Limitation  of  Actions 

See  Statute  of  Limitations. 

Limitation  of  Time 

relevant  to  beginning  actions,  472,  476,  477. 
relevant  to  filing  bills  of  review,  651,  652. 
relevant  to  filing  bills  of  revivor,  627. 


TNDEX  L065 

(The  references  are  to  the  sections) 

Lowell,  Judge  John 

opinion  on  costs  in  cases  of  disclaimers,  205. 
opinion  on  experimental  use,  95. 
opinion  on  invention,  37. 

opinion  on  liability  of  officers,  directors,  and  stockholders  of 
corporations  for  corporate  infringement,  410a. 

Machines 

claims  in  specifications  of,  117. 
defined,  16. 

distinguishable  from  manufactures,  19. 
how  reduced  to  practice,  141a. 
subjects  of  patents,  1. 

Magistrates 

before  whom  oath  may  be  made  to  affidavits,  584. 
before  whom  oath  may  be  made  to  specifications,  122. 

Making 

more  than  two  years  before  application  for  letters  patent,  99. 

Mandamus 

to  compel  Commissioner  of  Patents  to  allow  appeal,  132. 
when  not  grantable,  134. 

Manufacturers 

assuming  defence  in  suits  against  dealers,  407. 

Manufactures 

claims  in  specifications  of,  118. 

distinguishable  from  compositions  of  matter  and  from  machines, 

19. 
how  reduced  to  practice,  141a. 
patent-law,  meaning  of  the  word,  17. 
subjects  of  patents,  1. 
term  includes  buildings,  17. 

Marking  "Patented  " 

making  or  selling  without,  how  far  a  defence  in  equity,  616. 
making  or  selling  without,  how  pleaded  in  actions  at  law,  463. 


1006  INDEX 

(The  references  are  to  the  sections) 

Marking  "  Patented  " — (Continued.) 

making  or  selling  without,  how  pleaded  in  actions  in  equity,  616. 

making  or  selling  without,  how  proved,  528. 

making  or  selling  without,  must  be  negatived  by  plaintiff's 

pleading  and  evidence  in  chief,  433a,  496. 
method  of  marking,  496. 

must  be  shown  to  recover  either  damages  or  profits,  579. 
need  not  be  shown  to  obtain  injunction,  636. 

Married  Women 

as  assignors  and  assignees  of  patent  rights,  275. 
as  defendants  in  patent  cases,  402. 

Marshall,  Chief  Justice 

opinion  on  equity  jurisdiction,  395. 
opinion  on  reissues,  210. 

Masters  in  Chancery 

draft  reports  of,  744. 

exceptions  to  reports  of,  745-749. 

fees  of,  by  whom  paid,  739. 

final  reports  of,  750. 

hearing  in  equity  cases  before,  632,  643. 

infringement  investigated  by,  in  point  of  extent,  742. 

infringement  investigated  by,  in  point  of  varieties,  743. 

proceedings  before,  739-743. 

remanding  case  for  further  evidence  before,  656. 

system  of  practice  relevant  to  findings  of,  750. 

taking  account  before,  when  stopped,  648. 

Materials 

substitution  of,  as  affecting  infringement,  370,  371,  372. 
substitution  of,  as  affecting  invention,  28,  29. 

Matthews,  Justice 

opinion  on  invention,  24,  32. 

McCrary,  Judge 

opinion  on  mode  of  operation,  343. 


INDEX  10G7 

(The  references  are  to  the  sections) 

McKenna,  Judge 

opinion  on  aggregation,  32. 

McKinnon,  Judge 

opinion  on  novelty,  69. 

Means 

use  of  word  in  claims,  117a. 

Mechanic-Employees 

as  defendants  in  actions  for  infringement,  403. 

Miller,  Justice 

opinion  on  ethical  character  of  patents,  153. 

opinion  on  injunctions  after  expirations  of  patents,  698. 

Miller  v.  Brass  Co. 
defence  in,  226. 

defence  in,  how  pleaded  in  actions  at  law,  458. 
defence  in,  how  pleaded  in  actions  in  equity,  611. 
defence  in,  how  proved,  523. 

Miller  v.  Eagle  Co. 

defence  in,  180a. 

defence  in,  how  pleaded  in  actions  at  law,  460. 
defence  in,  how  pleaded  in  actions  in  equity,  613. 
defence  in,  how  proved,  525. 

Mistake 

causing  reissuable  faults,  220. 

justifying  disclaimers,  195,  196. 

remedy  for  issuing  or  obtaining  patent  through,  321. 

Mode  of  Operation 

as  affecting  infringement,  341-346a. 
described  in  specifications,  111. 
novelty  of,  when  necessary  to  invention,  37. 
when  changed  by  omission  of  parts,  35. 


1008  INDEX 

(The  references  are  to  the  sections) 

Models 

amendment  of,  138,  214. 

making  of,  may  constitute  evidence  of  birth  of  subsequently 

patented  inventions,  70,  141a. 
meaning  of  word  "  model,"  61. 
never  negative  novelty,  61. 
when  required  with  applications,  127. 

Months 

calendar,  not  lunar,  125. 

Mortgages 

of  patents,  288a. 

Motions 

alleging  non-jurisdiction  of  equity,  594. 

for  attachments  for  contempt  of  court,  708-710. 

for  preliminary  injunctions,  659-663. 

to  dissolve  preliminary  injunctions,  659,  692-694. 

to  reinstate  dissolved  preliminary  injunctions,  695. 

to  dismiss  bill  of  complaint,  588. 

to  dissolve  reinstated  preliminary  injunctions,  695.  \ 

to  strike  evidence  from  the  record,  600. 

Mowry  v.  Whitney 

the  rule  of  profits  in,  725-735. 

Multifariousness 

bills  declaring  on  joint  and  separate  infringements,  407. 

in  bills  in  equity,  417. 

when  two  or  more  patents  may  be  joined  in  a  single  bill,  417. 

Multiplicity  of  Suits 

against  dealers  while  suit  pending  against  manufacturer,  70. 

Municipalities 
See  "  Cities." 

Nelson,  Justice 

opinion  on  injunctions  in  interference  actions,  319. 


INDEX  10(31) 

(The  references  are  to  the  sections) 

New  Matter 

in  reissues,  214. 

meaning  of  the  phrase,  240. 

New  Trials 

in  actions  at  law  for  infringement,  539. 

New  and  Analogous  Use 

does  not  avoid  infringement,  364. 

of  designs,  38. 

of  old  thing  not  invention,  38,  180. 

Non-Analogous  New  Use 

may  be  invention,  39. 

on  question  of  infringement,  364. 

Non-Infringement 

of  secret  process,  how  proven,  532. 
how  proven,  532. 

Non-Use 

of  patent,  ground  for  narrow  construction  of  claims,  185. 
of  patent,  not  a  defence  in  equity,  701a. 

Notice 

See  "  Marking  Patented." 

constructive,  of  letters  patent,  191. 

of  infringement,  528,  579,  596,  636,  644. 

of  licenses,  304. 

of  motions  for  preliminary  injunctions,  661. 

of  special  matter,  443,  444. 

protecting  prior  unrecorded  assignments,  281. 

Novelty 

as  affected  by  another  patent  to  same  inventor  for  same  inven- 
tion, 69,  180a. 
as  affected  by  prior  abandoned  experiments,  63. 
defined,  53. 
depends  on  questions  of  fact,  75. 


1070  INDEX 

(The  references  are  to  the  sections) 

Novelty  —(Continued.) 

evidence  of  want  of,  506-508. 

evidence  of  want  of,  degree  of  proof  required,  76. 

may  be  present  though  invention  absent,  62. 

must  be  put  in  issue  in  declarations,  424. 

necessary  to  patentability,  52. 

negatived  by  prior  knowledge  and  use  in  this  country,  71. 

negatived  by  prior  making  in  this  country,  72. 

negatived  by  prior  patent,  54,  57. 

negatived  by  prior  patent  even  though  device  of  latter  is  in- 
capable of  successful  operation,  57. 

negatived  by  prior  printed  publication,  54,  55,  57. 

negation  of,  not  averted  bjr  ignorance  of  anticipating  matter,  73. 

negation  of,  not  averted  by  producing  old  thing  from  new  source, 
74. 

not  negatived  by  antiquity  of  part,  66. 

not  negatived  by  anything  neither  designed,  apparently  adapted, 
nor  actually  used,  to  perform  the  same  function,  68. 

not  negatived  by  anything  occurring  after  the  date  of  the  in- 
vention, 69. 

not  negatived  by  description  in  prior  application,  60. 

not  negatived  by  forgotten  arts,  71. 

not  negatived  by  incidental  and  not  understood  showing  in 
prior  patent,  67. 

not  negatived  by  incomplete  prior  description,  57. 

not  negatived  by  later  patent  bearing  earlier  application  date, 
55. 

not  negatived  by  mere  knowledge  of  a  prior  foreign  use,  54. 

not  negatived  by  prior  abandoned  application,  58. 

not  negatived  by  prior  accidental  and  not  understood  produc- 
tion, 67. 

not  negatived  by  prior  description  of  substantially  different 
thing  or  process,  57,  65. 

not  negatived  by  prior  model,  61. 

not  negatived  by  prior  private  foreign  patent,  55. 

not  negatived  by  prior  English  preliminary  specifications,  55. 

not  negatived  by  prior  unfinished  work,  63. 

not  negatived  by  prior  use  in  foreign  country,  54. 

not  negatived  by  prior  useless  process  or  thing,  65. 


INDEX  1071 

(The  references  are  to  the  sections) 

Novelty — (Continued.) 

not  negatived  by  substantially  different  prior  process  or  thing, 

62. 
not  negatived  by  unclaimed  invention  in  prior  patent  to  same 

inventor,  69,  180. 
not  negatived  by  unpublished  drawings,  61. 
not  universally  negatived  by  whatever  would  infringe  if  later, 

62. 
of  designs,  64. 

predicated  of  everything  which  is  absolutely  new,  52. 
predicated  of  some  things  not  absolutely  new,  53. 
want  of,  how  pleaded  in  actions  at  law,  447. 
want  of,  how  pleaded  in  actions  in  equity,  600. 
want  of,  how  proved,  76,  506-508. 
want  of,  how  rebutted,  509,  510. 
weight  of  evidence  necessary  to  negative,  76. 

Oaths 

affirmations  substituted  for,  124. 

effect  of  waiving,  in  bills,  581. 

supplemental,  138. 

to  answers,  581. 

to  bills  in  equity,  584. 

to  pleas  in  equity,  589. 

to  specifications,  122,  123. 

Obiter  Dicta 

significance  of,  537. 

Objections 

to  depositions,  535. 
to  evidence,  for  want  of  pleading,  600. 
to  evidence  before  masters,  741. 
to  questions,  638. 

Officers 

of  corporations,  as  defendants,  410,  411,  413,  415. 

of  States,  as  defendants,  401. 

of  United  States,  as  defendants,  393. 

when  may  not  be  brought  in  by  supplemental  bill,  625. 


U)72  INDEX 

(The  references  are  to  the  sections) 

Omission 

as  affecting  infringement,  338,  349,  369. 

as  affecting  invention,  35. 

as  affecting  sameness  of  invention,  244. 

On  Sale 

in  foreign  country  more  than  two  years  before  application,  101. 
in  this  country  more  than  two  years  before  application,  93. 
patent-law,  meaning  of  the  phrase,  96. 

Options 

of  patentee-licensor  to  sue  for  royalty,  or  for  infringement,  309. 

Oral  Descriptions 

when  sufficient  to  establish  date  of  invention,  69. 

whether  fixing  dates  of  subsequently  patented  inventions,  70. 

Oral  Testimony 

of  date  of  conception  of  invention,  70,  141a. 

Owners  in  Common 

as  plaintiffs  or  complainants,  399. 
must  join  in  surrender  and  reissue,  252. 

Parker  &  Whipple  Co.  v.  Yale  Clock  Co. 
rule  in,  233. 

Parties 

See  "  Plaintiffs  "  and  "  Defendants." 

Partition 

of  patent  rights,  295. 

Partnerships 

as  assignors  or  as  assignees,  275. 

as  complainants  or  plaintiffs,  394. 

as  patentees,  171. 

as  defendants,  401,  408. 

as  licensees,  310,  400. 


INDEX  1073 

(The  references  are  to  the  sections) 

Parts 

of  machines,  how  claimed,  117a. 

Patentability 

prerequisites  of,  1,  2,  3,  23,  52,  77. 

Patents 

alleged  abandonment  of,  100,  107. 

beginning  of  terms  of,  170. 

classification  of,  177«. 

consideration  given  for,  153. 

duration  of,  162-163. 

expiration  of,  before  end  of  apparent  term,  how  pleaded  in  ac- 
tions at  law,  462. 

expiration  of,  before  end  of  apparent  term,  how  pleaded  in  ac- 
tions in  equity,  615. 

expiration  of,  before  end  of  apparent  term,  how  proved,  527. 

founded  upon  what,  150. 

granted  for  what  subjects,  1. 

how  construed,  181-189. 

interfering,  315. 

mortgages  of,  288a. 

not  odious  monopolies,  153. 

plurality  of  approximating,  to  one  inventor,  180a. 

plurality  of,  when  suable  on,  in  one  action,  417. 

repeal  of,  321. 

territory  covered  by,  160. 

when  dated,  170. 

Patent  Experts 
labors  of,  191. 

Patent  Laws 

constitutional  authority  for,  1. 
the  sources  of,  537,  634. 

Patent  Rights 

are  property  in  general  sense  of  term,  151. 
dignity  of,  152. 


1074  INDEX 

(The  references  are  to  the  sections) 

Patent  Rights— {Continued.) 

essence  of,  is  right  to  exclude  others,  151. 

exclusive  of  government,  157. 

not  subject  to  common-law  execution,  156. 

not  subject  to  State  interference,  155. 

property,  151. 

relevant  to  specimens  made  or  purchased  before  application  for, 

158. 
situs  of,  151. 

State  laws  affecting  sale  of,  154. 
subject  to  creditors'  bills,  156. 
territorial  extent  of,  160,  707. 

Patent  Office  Rules 

founded  on  what,  109. 

relevant  to  applications,  109,  110,  121. 

relevant  to  drawings,  126. 

relevant  to  interferences,  140. 

relevant  to  models,  127. 

relevant  to  specifications,  115. 

relevant  to  specimens  of  compositions  of  matter,  128. 

Penalties 

for  disobedience  of  injunctions,  710. 
in  qui  tarn  actions,  329. 

Perpetuation  of  Testimony 

bills  for,  585. 

Persons 

liable  to  actions  for  infringement,  402. 

Petitions 

for  leave  to  file  bills  of  review,  652. 
for  sale  of  patents  to  pay  costs,  289. 
for  letters  patent,  110. 
for  rehearings,  645. 

Philips,  Judge 

opinion  of,  on  invention,  25. 


INDEX  11)75 

(The  references  are  to  the  sections) 

Plaintiffs 

costs  recoverable  by,  543. 

equitable  owner  in  suit  against  patentee,  394. 

in  actions  at  law  for  infringement,  394-400. 

in  qui  tarn  actions,  330. 

legal  owner  as  against  equitable  owner,  286. 

owner  and  licensee  as,  579. 

Pleas  in  Actions  at  Law 

bad  in  part,  bad  altogether,  482. 

demurrable,  when,  484. 

dilatory,  439. 

in  bar,  440. 

of  actual  abandonment,  449. 

of  constructive  abandonment,  449. 

of  deceptively  lacking  or  excessive  specification,  453. 

of  defence  in  Miller  v.  Eagle  Co.,  460. 

of  estoppel,  467. 

of  expiration  of  patent,  462. 

of  indistinct  claims,  455. 

of  insufficient  specification,  454. 

of  joint  invention  for  sole  patent,  452. 

of  joint  patent  for  sole  invention,  452. 

of  license,  465. 

of  making  or  selling  without  marking  "  patented,"  463. 

of  non-infringement,  466. 

of  release,  465. 

of  repeal  of  patent,  461. 

of  rule  in  Miller  v.  Brass  Co.,  458. 

of  statutes  of  limitation,  471. 

of  surreptitious  or  unjust  obtaining  of  patent,  451. 

of  unreasonable  delay  to  file  needed  disclaimer,  456. 

of  want  of  being  a  statutory  subject  of  a  patent,  446. 

of  want  of  identity  between  application  and  letters  patent, 

450. 
of  want  of  identity  between  letters  patent  and  reissue,  459. 
of  want  of  invention,  446. 
of  want  of  novelty,  447. 
of  want  of  reissuability,  457. 


L07t)  INDEX 

(The  references  are  to  the  sections) 

Pleas  in  Actions  at  Law — (Continued.) 
of  want  of  title,  464. 
of  want  of  utility,  448. 

Pleas  in  Actions  in  Equity 

abolished,  589. 

found  bad  in  law,  590. 

found  good  in  law  and  true  in  fact,  590,  649. 

found  good  in  law  and  untrue  in  fact,  590. 

proceedings  on,  590. 

replications  to,  590. 

to  bills  in  the  nature  of  supplemental  bills,  631. 

to  original  bills,  588,  589. 

to  supplemental  bills,  631. 

Police  Powers 

over  specimens  of  patented  things,  155. 

Practice 

in  actions  at  law,  489. 

in  actions  in  equity,  489. 

in  relation  to  bills  of  particulars,  590a,  5906. 

in  relation  to  interrogatories,  590c,  590«\ 

on  bills  to  repeal  patents,  323. 

on  masters'  findings,  750. 

Prayers 

for  preliminary  injunctions,  660. 
for  process,  582. 
for  relief,  580. 

Preamble 

of  specifications,  111,  112. 

Preferable 

construction  should  be  described,  185. 

how  construction  of  claims  affected  by  use  of  word  in  describing 
element,  186. 


INDEX  1077 

(The  references  are  to  the  sections) 

Presumptions 

against  agents  when  sued  by  employers  for  infringement,  403. 

of  date  of  invention,  69. 

of  infringement,  665. 

of  validity,  665. 

of  validity  of  letters,  how  overcome  or  affected,  491. 

that  all  formal  requisites  to  issuance  of  patent  have  been  com- 
plied with,  491. 

that  inventors  borrowed  whatever  in  their  inventions  was  old, 
43. 

that  letters  patent  are  for  same  inventions,  as  applications,  190. 

that  reissues  are  for  same  inventions  as  originals,  243. 

presumption  in  favor  of  validity,  187. 

Primary  Inventions 
defined,  359. 

Primary  Patents 

how  infringed,  359,  362. 

Principle 

contrasted  with  process,  3,  7-15. 

of  invention,  how  explained  in  specification,  115. 

of  invention,  need  not  be  understood  by  inventor,  175. 

Principles 

distinguished  from  processes,  7-15. 
not  patentable,  2,  7. 

Printed  Publications 
defined,  56. 

when  negativing  novelty,  54. 
when  working  constructive  abandonment,  104a. 

Prior  Abandoned  Experiments 
as  affecting  novelty,  63. 

Prior  Adjudication 

a  foundation  for  a  preliminary  injunction,  665,  666. 

in  interference,  effect  on  motion  for  preliminary  injunction,  674. 


1078  INDEX 

(The  references  are  to  the  sections) 

Prior  Making 

may  negative  novelty,  72. 

Prior  Private  Foreign  Patent 
never  negatives  novelty,  55. 

Prior  Public  Patent 

must  negative  novelty  on  their  face,  57. 

when  negativing  novelty,  54,  55. 

when  working  constructive  abandonment,  104a. 

Prior  Preliminary  English  Specification 

never  negatives  novelty,  55. 

sometimes  works  constructive  abandonment,  104a. 

Prior  State  of  the  Art 

See  "  State  of  the  Art." 

Prior  Use 

extent  of,  necessary  to  anticipate,  71. 

in  foreign  country  when  negatives  novelty,  54. 

in  this  country  negatives  novelty,  71. 

Priority 

as  between  two  patents  issued  on  same  day,  69. 

question  of,  between  rival  inventors,  how  settled,  70,  140-142, 

315-320. 
questions  of,  as  between  two  patents  to  the  same  inventor,  69. 

Process 

service  of,  how  made,  389. 

Processes 

claims  for,  how  construed,  186. 

claims  for,  how  infringed,  335-338. 

claims  for,  may  be  included  in  claims  for  product,  176. 

classes  of,  3. 

distinguished  from  principles,  7-15. 

how  reduced  to  practice,  141a. 


INDEX  1079 

(The  references  are  to  the  sections) 

Processes— {Continued.) 
machine,  3. 
manipulative,  3. 
mechanical,  3. 
non-mechanical,  3. 

process  and  machine  claims  in  one  application,  180,  183. 
process  and  product  claims  in  one  application,  180. 
subjects  of  patents,  3. 

Process  Patents 

claims  in  specifications  of,  120. 

description  in,  174. 

exclusive  of  those  who  practiced  the  process  after  invention  and 

before  application,  159. 
infringed,  how,  335-338. 
may  be  valid  although  all  steps  are  old,  37. 
means  of  practicing  process  must  be  described,  115. 
when  infringed,  although  steps  transposed,  338. 
when  mechanism  for  performing  process  must  be  described,  174. 

Profert 

effect  of  generally,  579. 

in  declarations  and  bills  of  complaint,  428,  433,  579. 

Profits 

account  of,  covering  what  time,  714. 

account  of,  how  taken,  711-750. 

accruing  before  surrender  and  reissue,  231. 

decrees  for,  573. 

defendant's,  not  recoverable  at  law,  555. 

defendants',  recoverable  in  equity,  711. 

evidence  of,  636,  740. 

from  contributory  infringement,  712. 

from  infringement  by  making  and  selling,  717-723,  735. 

from  infringement  by  selling,  724. 

from  infringement  by  using,  725-734a. 

from  infringement  of  design  patents,  723a. 

generic  rule  for  ascertaining,  715. 

interest  on,  736. 


1080  INDEX 

(The  references  are  to  the  sections) 

Profits  —(Continued.) 

liability  as  between  successive  owners  of  an  infringing  business, 

407,  712. 
cot  measured  by  damages,  716. 
not  recoverable  in  absence  of  actual  or  constructive  notice  of 

infringement,  579. 
proceedings  for  ascertaining,  739-750. 
recoverable  in  cases  of  joint  infringement,  712. 
recoverable  where  infringement  was  partly  unprofitable,  713. 

Property 

in  patents,  154. 

Proportion 

change  of,  as  affecting  invention,  in  compositions  of  matter,  41«. 
change  of,  as  affecting  infringement  of  patent  for  composition 
of  matter,  373. 

Public  Knowledge 

after  invention  and  prior  to  application,  100. 

Public  Interest 

in  patent  cases,  633,  649. 

Public  Policy 

when  contract  to  assign  future  inventions  contrary  to,  276a. 
when  involved  in  motions  for  injunctions,  687. 

Public  Use 

more  than  two  years  before  application,  93. 
patent-law  meaning  of  the  phrase,  94-95. 
surreptitious  use  by  stranger,  not,  95. 
when  dating  from  abandoned  application,  91,  145. 

Questions  of  Fact 
abandonment,  108. 
how  litigated,  635. 
infringement,  339. 


INDEX  1081 

(The  references  are  to  the  sections) 

Questions  of  Fact — [Continued.) 
invention,  42. 
novelty,  75. 

sufficiency  of  specification,  179. 
utility,  78. 

Questions  of  Law 

arising  on  hearings  in  equity,  034. 
arising  on  trials  at  law,  537. 
construction  of  letters  patent,  189. 
sources  of  decisions  of,  634. 

Qui  Tarn  Actions 

declarations  in,  332. 

defendants  in,  330. 

form  of,  332. 

functions  of,  324. 

jurisdiction  of,  331. 

penalties  in,  329. 

plaintiffs  in,  330. 

proof  in,  328. 

writs  of  error  in,  334. 

wrongs  remedied  by,  325-327,  333. 

Railway  Co.  v.  Sayles 

rule  in,  184,  359-362. 

Rearrangement 

of  parts,  as  affecting  infringement,  348. 
of  parts,  involving  invention,  37. 

Receiver 

as  a  defendant,  401. 

of  court  invoking  license  to  insolvent,  310. 

of  court  taking  titles  of  dissolved  corporations,  290. 

Record 

letters  patent,  matter  of,  191. 


1082  INDEX 

(The  references  are  to  the  sections) 

Recording 

assignments  must  convey  present  interest  to  be  effective  as 

notice,  281. 
of  assignments,  281. 
of  grants,  287. 
of  licenses,  304. 

Recovery 

of  damages  or  profits  working  license,  314. 

Reduction  to  Practice 

actual,  70,  141a,  141c. 
constructive,  1416. 

Referee 

trial  by,  541. 

Reference  Numerals  or  Letters 

significance  of,  in  claims,  117a,  182a. 

Registry 

of  Patent  Office  attorneys,  129a. 

"  Regular  and  Established  Place  of  Business." 
See  "Venue." 

Rehearing 

effect  of,  on  accounting,  648. 

for  matter  apparent  on  the  record,  646. 

on  account  of  newly  discovered  evidence,  647. 

petitions  for,  645. 

Reinvention 

what  right  conferred  by,  158. 

Reissues 

applications  for,  214. 
beginning  of  history  of,  210. 
broadened,  219,  226,  227. 


INDKX  1083 

(The  references  are  to  the  sections) 

Reissues — (Continued.) 

claims  of,  disclaimed,  201. 

claims,  how  interpreted,  248. 

construed  liberally,  248. 

correcting  errors  in  drawings,  210. 

covered  by  assignment  of  original,  250. 

covering  things  made  before  date  of,  254. 

delay  in  applying  for,  extent  permissible,  216a,  226,  227. 

how  stated  in  declarations,  429. 

infringement  of,  254. 

invalidity  of,  for  want  of  reissuability  of  original,  how  pleaded  in 

actions  at  law,  457. 
invalidity  of,  for  want  of  reissuability  of  original,  how  pleaded 

in  actions  in  equity,  610. 
invalidity  of,  for  want  of  reissuability  of  original,  how  proved, 

522. 
leaving  claims  unchanged  in  scope,  218a. 
legal  effect  of,  254. 

must  be  for  same  invention  as  original,  233. 
mutual  owners  must  join  in  applications  for,  252. 
narrowed,  216a,  218a. 

narrowed,  compared  with  disclaimers,  216a. 
new  matter  in,  214. 

not  affected  by  more  than  two  years'  prior  public  use  or  sale,  229. 
not  granted  after  expiration  of  original,  232. 
novelty  of,  dating  from  when,  254. 
of  reissues,  232. 

pending  application  for,  effect  on  suit  on  original  patent,  231. 
prima  facie  evidence  of  their  own  validity,  492. 
remedies  for  refusal  to  allow,  214. 
rights  of  grantees  under,  253. 
to  assignees,  212,  214,  250,  252. 
to  executors  or  administrators,  250. 
to  one  of  several  executors,  251. 
sources  of  reissuable  faults,  220. 
statutory  foundation  of,  211-215. 
subjects  of,  216. 

substituting  equivalents  in,  247. 
under  the  statute  of  1832,  211. 


1084  INDEX 

(The  references  are  to  the  sections) 

Reissues — (Continued.) 

under  the  statute  of  183G,  212. 

under  the  statute  of  1837,  213. 

under  the  statute  of  1870,  214. 

under  the  Revised  Statutes,  215. 

under  general  authority  of  the  Commissioner,  210. 

void  in  part  and  valid  in  part,  249. 

when  may  claim  single  device  shown,  but  not  separately  claimed 

in  the  original,  246. 
when  may  claim  sub-combination  shown  in  the  original,  245. 
where  there  is  neither  model  nor  drawing,  214. 

Rejection 

of  applications,  131,  133,  145. 

Rejoinders 

bad  in  part,  bad  altogether,  482. 

function  of,  in  actions  at  law  for  infringement,  478,  480. 

Releases 

how  pleaded  in  actions  at  law,  465. 

how  pleaded  in  actions  in  equity,  619. 

how  proved,  531. 

need  not  be  negatived  in  plaintiff's  evidence  in  chief,  496. 

to  one  of  several  joint  infringers,  531. 

to  sole  infringer  by  one  of  several  owners  in  common,  294,  531. 

Remedies 

for  infringement,  where  treated  in  this  book,  378. 

Renewal  of  Abandoned  Applications 
See  "  Applications." 

Repairing  Patented  Machine 

how  far  lawful,  302a. 

when  unlawful  by  reason  of  license  restriction,  302a. 

Repeal  of  Patents 

for  what  causes  had,  321. 


INDEX  1085 

(The  references  are  to  the  sections) 

Repeal  of  Patents  —(Continued.) 

in  what  courts  obtainable,  322,  323,  654. 
how  pleaded  in  actions  at  law,  461. 
how  pleaded  in  actions  in  equity,  614. 
how  proved,  526. 
practice  in  cases  of  bills  for,  323. 

Replications  in  Actions  at  Law 

bad  in  part,  bad  altogether,  482. 
function  of,  in  patent  cases,  478-480. 

Replications  in  Actions  in  Equity 
to  answers,  623. 
to  pleas,  590. 

Reports 

exceptions  to  masters',  745-749. 
masters'  draft,  744. 
masters'  final,  750. 

Res  Judicata 

See  "  Estoppel." 

as  to  persons  not  parties  assisting  in  defence,  468. 

foundation,  limitations,  and  operation  of  the  doctrine         468, 

550,  621,  674. 
how  pleaded  in  actions  at  law,  470. 
how  pleaded  in  actions  in  equity,  621. 
how  proved,  533,  621. 
in  interferences,  141,  142. 
interference  decisions,  when  pleadable  as,  142. 

Restraint  of  Trade 

as  defense  to  bill  for  infringement,  591a. 

by  means  of  license  restrictions  on  use  and  price  of  resale,  314a 

et  seq. 
contracts  to  assign  future  inventions  in,  276a. 

Restrictions 

of  claims  by  Patent  Office,  187a. 
price  and  use,  in  licenses,  315  et  seq. 


1086  INDEX 

(The  references  are  to  the  sections) 

Result 

as  affecting  infringement,  340. 
necessary  to  utility,  77. 
new,  not  necessary  to  invention,  26. 
old,  may  be  invention,  26. 

Rights 

kinds  of,  in  patented  inventions,  155. 

of  inventors,  patentees,  etc.,  where  treated  in  this  book,  378. 

Rights  of  Action 

assignment  of,  277. 

assignment  of,  how  protected  from  subsequent  purchasers,  281. 

Root  v.  Railway  Co. 
rule  in,  572,  592,  593. 

Royalties 

as  measure  of  damages,  556-558. 

established  rate  of,  how  affecting  right  to  preliminary  injunc- 
tions, 686. 

for  making,  564. 

for  making  and  using,  no  criterion  of  damages  for  making  and 
selling,  or  vice  verso.,  561. 

incident  to  licenses,  309,  310,  312,  313a. 

of  plaintiff,  no  measure  of  recoverable  profits,  716. 

option  of  patentee-licensor  to  sue  for,  or  for  infringement,  309. 

regard  to  proportion,  in  measuring  damages  by,  562. 

reserved  on  sale  of  patents,  no  measure  of  damages,  560. 

Sale 

See  "  On  Sale." 

Same  Invention 

meaning  of  the  phrase,  as  between  applications  and  letters  patent 
thereon,  138,  440,  450,  514,  603. 

meaning  of  the  phrase,  as  between  interfering  patents  to  differ- 
ent inventors,  315. 


INDEX  1087 

(The  references  are  to  the  sections) 

Same  Invention — {Continued) 

meaning  of  the  phrase,  as  between  a  plurality  of  original  ap- 
proximating patents  to  the  same  inventor,  180a. 

meaning  of  the  phrase,  as  between  an  original  patent  and  a  re- 
issue thereof,  233,  242,  243,  244,  440,  459,  524,  612. 

presumption  of,  as  between  applications  and  letters  patent, 
thereon,  190. 

presumption  of,  as  between  an  original  patent,  and  a  reissue 
thereof,  243. 

Secondary  Inventions 
defined,  359. 

Secondary  Patents 

how  infringed,  362. 

Secrecy 

as  a  substitute  for  a  patent,  91,  149a. 

Secret  Process 

defendant  need  not  disclose  his,  532. 

Set-off 

when  may  be  set  out  in  answer,  316,  5916. 

Shepley,  Judge 

opinion  'of,  on  substitution  of  ingredients  in  compositions  of 
matter,  371. 

Sherman  Anti- Trust  Act 

See  "  Restraint  of  Trade." 

Shipman,  Judge  Nathaniel 
opinion  of,  on  invention,  35. 
opinion  of,  on  novelty,  65. 

Shipman,  Judge  W.  D. 

opinion  of,  on  proceedings  before  masters,  741. 


1088  INDEX 

(The  references  are  to  the  sections) 

Ships 

American,  practice  of  patented  invention  on  board  of,  on  high 

seas,  161. 
foreign,  use  of  patented  invention  on  board  of,  in  United  States 

ports,  161. 

Shop  Rights 

implied  from  employment,  313a. 

Signatures 

to  drawings,  126. 

to  specifications,  111,  121. 

Similiter 

function  and  importance  of,  481. 

Skillful  Mechanic 

meaning  of  the  phrase,  57,  115,  174. 

Sole  Invention 

distinguished  from  joint  invention,  45,  46. 

for  joint  patent,  51. 

not  inconsistent  with  received  expert  assistance,  49. 

not  inconsistent  with  specially  sought  information,  48. 

Special  Pleading 

ancient  function  of,  442. 

defences  admitting,  443,  447,  449,  451,  453,  455,  459,  461,  464, 

471. 
defences  requiring,  446,  448,  450,  452,  454,  456,  458,  462,  465, 

470. 

Specific  Performance 

enforced,  of  contracts  relevant  to  patent  rights,  276a,  286,  294. 

Specification 

claims,  the  operative  parts  of,  219. 
constituents  of,  111. 


INDEX  108IJ 

(The  references  are  to  the  sections) 

Specification  —(Continued.) 

deceitfully  lacking  or  excessive,  how  pleaded  in  actions  at  law, 

453. 
deceitfully  lacking  or  excessive,  how  pleaded  in  actions  in  equity, 

606. 
deceitfully  lacking  or  excessive,  how  proved  to  be,  518. 
insufficient,  how  pleaded  in  actions  at  law,  454. 
insufficient,  how  pleaded  in  actions  in  equity,  607. 
insufficient,  how  proved  to  be,  519. 
meaning  of  the  word,  173,  217. 
oath  to,  122,  123. 

Standard  of  Comparison 

under  the  rule  in  Mowry  v.  Whitney,  732-734. 

Stare  Decisis 

applicability  of  doctrine,  634,  635. 
rule  in  Second  Circuit,  635. 

States 

not  liable  to  suits  for  infringement,  401. 
power  of,  over  patented  articles,  155. 

State  Courts 

jurisdiction  of,  over  actions  to  enforce  or  set  aside  contracts 

relevant  to  patents,  388. 
jurisdiction  of,  over  creditors'  bills  filed  to  collect  debts  out  of 

patent  rights,  289. 
jurisdiction  of,  over  patents  of  insolvents,  290. 
non-jurisdiction  of,  in  infringement  actions,  380. 

State  of  the  Art 

affecting  questions  of  invention,  42,  43,  181,  184,  184a. 

claims  construed  in  the  light  of,  184. 

evidence  of  experts  relevant  to,  500. 

judicial  notice  of,  636.  .  . 

mere  application  not  a  part  of  the  prior  art,  43. 

mistake  relevant  to,  how  remedied,  220. 

prior,  may  be  shown  under  general  issue,  466. 


1090  INDEX 

(The  references  are  to  the  sections) 

State  of  Other  Arts 

how  considered  in  construing  claims,  184a. 

Statutes 

See  "  Appendix  for  all  Statutes." 

special,  grafted  upon  general  statutes,  188. 

Statutes  of  Limitation 

application  of,  to  actions  in  equity,  622. 

how  pleaded  in  actions  at  law,  471. 

how  pleaded  in  actions  in  equity,  622. 

the  national,  472. 

the  State,  476,  477. 

when  avoidance  of  must  be  shown  in  plaintiff's  pleading,  435, 

574. 
when  requiring  evidence  to  support  plea  of,  534. 

Stay 

of  accountings  pending  appeals  from  injunctions,  696a. 

of  suit  for  infringement  pending  suit  under  R.  S.,  §  4915,  705. 

of  suits  against  dealers  pending  suits  against  manufacturers,  705. 

Stipulations 

in  patent  cases,  641. 

Stockholders  in  Corporations 

as  defendants,  410,  411,  412,  415. 

Story,  Justice 

opinion  of,  on  abandonment  of  patents,  107. 
opinion  of,  on  jurisdiction  of  State  courts,  380. 
opinion  of,  on  liability  of  officers,  directors  and  stockholders  of 
corporations  for  corporate  infringement,  415. 

Sub-Combinations 

when  may  be  claimed  in  original  patents,  176. 
when  may  be  claimed  in  reissues,  though  not  claimed  in  originals, 
245. 


index  tog  I 

(The  references  are  to  the  sections) 

Subjects  of  Patents 
classes  of,  1. 

Subject  of  Patent 

want  of  being,  how  interposed  in  actions  at  law,  446. 
want  of  being,  how  interposed  in  actions  in  equity,  598. 
want  of  being,  how  established,  504. 

Substantial 

variant  force  of  the  word,  362. 

"  Substantially  as  Described  " 

function  of  the  phrase  in  a  claim,  182. 
when  the  phrase  is,  implied,  182. 

Substitution 

as  affecting  infringement,  350,  370,  371. 
as  affecting  invention,  28,  29,  36. 

Suggestions  to  Inventors 

distinguished  from  joint  invention,  47. 

Supersedeas 

on  appeal  to  Circuit  Court  of  Appeals,  654. 

Supplemental  Bills 

leave  of  court  necessary  to  filing,  630. 
subordinate  to  original  bills,  624. 
when  proper,  407,  625,  742. 

Supplemental  Bills  in  the  Nature  of  Bills  of  Review 

character  and  function  of,  647,  648. 

Supplementary  Decree 

to  cover  infringements  not  previously  before  the  court,  708. 

Supreme  Court  of  the  United  States 

appeals  to,  from  Court  of  Appeals  of  the  District  of  Columbia, 
657a. 


L092  INDEX 

(The  references  are  to  the  sections) 

Supreme  Court  of  the  United  States— (Continued.) 

appeals  to,  from  Circuit  Courts  of  Appeals,  654,  G57a. 
certificates  to,  from  Circuit  Courts  of  Appeals,  550,  657a. 
certiorari  from,  to  Circuit  Courts  of  Appeals,  550,  657a. 
writ  of  error  from,  to  Court  of  Appeals  of  District  of  Columbia, 
550. 

Supreme  Court  of  the  District  of  Columbia 

appeals  from,  to  Court  of  Appeals  of  the  District  of  Columbia, 
144,  654. 

jurisdiction  of,  in  patent  cases,  134,  379. 

writ  of  error  to,  from  Court  of  Appeals  of  the  District  of  Colum- 
bia, 550. 

Sur-rejoinders 

function  of,  in  actions  at  law  for  infringement,  478. 

Surrender  of  Inventions 

how  effected,  105. 

Surrender  of  Letters  Patent 

effect  of,  on  accrued  damages  and  profits,  231. 
mutual  owners  must  join  in,  252. 
when  reissue  is  refused,  231. 
with  a  view  to  reissue,  230-232. 

Suspension 

of  permanent  injunctions  pending  appeals,  703. 
of  preliminary  injunction  pending  appeals,  696a. 

"Systems  " 

checking,  patentability  of,  3. 
patentability  of,  3. 

Taney,  Chief-Justice 

opinion  of,  on  reissuability  of  patents,  226. 

Taxation 

patents  not  subject  to,  191a. 
patented  things  are  subject  to,  155. 


INDEX  1093 

(The  references  are  to  the  sections) 

Taxation  of  Costs 

appeal  from,  549. 

how  and  when  made,  549. 

Temporary  Restraining  Orders 

pending  motions  for  preliminary  injunctions,  664. 

Tenancy  in  Common 

in  patent  rights,  292. 

Tenants  in  Common 

owners  of  undivided  part  interests  are,  292. 
rights  of,  294. 

Tenures 

upon  which  patent  rights  may  be  held,  274a. 

Terms  of  Patents 

as  affected  by  Treaty  of  Brussels,  163. 
how  fixed,  170. 

when  limited  by  expiration  of  foreign  patent  for  same  invention, 
163,  164. 

Territory 

covered  by  patents,  160. 

Test  Case 

pendency  of,  excusing  delay  to  file  bill  for  infringement,  596. 
pendency  of,  excusing  delay  to  move  for  preliminary  injunctions, 
684. 

Testimony 

in  actions  at  law,  535. 

in  actions  in  equity,  638,  639,  640. 

objections  to,  638. 

Text  Writers 

weigh!  of  statements  of,  537. 


10!)!  INDEX 

(The  references  are  to  the  sections) 

Thayer,  Judge 

on  unlawful  marking  "  patented,"  329. 

Theory 

invention  which  resides  in,  may  be  patentable,  23. 

Threats  of  Suit 

under  what  conditions  enjoined,  585a. 

Time 

for  taking  depositions  in  actions  in  equity,  639. 

Title 

after  acquired,  282. 

assignee  before  issuance  of  patent  has  legal,  171,  274. 

by  assignment,  274,  275. 

by  bankruptcy  or  insolvency,  290. 

by  creditor's  bill,  289. 

by  death,  291. 

by  grant,  287. 

by  occupancy,  273. 

certainty  of,  necessary  to  preliminary  injunction,  665,  675. 

conveyance  of  legal,  conveying  equitable,  286. 

conveyed  by  estoppel,  275. 

equitable,  how  arising,  274,  285. 

equitable,  how  upheld  and  transferred,  286. 

equitable  owner,  not  proper  plaintiff,  286. 

how  stated  in  declarations,  432. 

how  proved,  495. 

in  a  plurality  of  persons,  292. 

inchoate,  273. 

methods  of  acquisition  of,  272. 

nature  of  title  in  cases  of  divided  ownership,  292. 

removal  of  cloud  from,  295. 

to  reissues,  250. 

to  reissues  when  granted  to  executors  or  administrators,  251. 

variant  nature  of,  272. 

want  of,  how  pleaded  in  actions  at  law,  464. 

want,  of,  how  pleaded  in  actions  in  equity,  617. 


INDEX  1095 

(The  references  are  to  the  sections) 

Title — (Continued.) 

want  of,  how  proved,  52!). 
warranty  of,  282. 

Townsend,  Judge 

opinion  of,  on  invention,  25. 
opinion  of,  on  novelty,  65. 

Treaty  of  Brussels 

effect  on  term  of  domestic  patents,  163. 

Trespass  on  the  Case 

actions  of,  for  infringements  of  patents,  421. 
declarations  in  actions  of,  422-438. 
dilatory  pleas  in  actions  of,  439. 
pleas  in  bar  in  actions  of,  440. 

Trials 

by  judges  without  juries,  540. 

by  juries,  488. 

by  juries  in  equity  cases,  642. 

by  juries,  of  issues  sent  out  of  equity,  595. 

by  referees,  541. 

of  actions  at  law,  487. 

Trustee 

holding  titles  to  patents,  285. 

in  bankruptcy,  as  defendant,  401. 

infringer  treated  as,  in  respect  of  his  profits,  715. 

Trusts 

constructive,  285. 
resulting,  285. 

Two  Years' 

sale,  or  public  use  more  than,  before  application,  93,  94,  95,  96, 
229. 

Unanimity  of  Juries 

history  of,  488. 


1096  INDEX 

(The  references  are  to  the  sections) 

Unauthorized  Marking 
how  punished,  325. 
how  restrained,  333. 

Useful  Art 

subject  of  a  patent,  1. 

Uses 

all,  of  patented  thing,  covered  by  the  patent,  175,  180. 

Utility 

burden  of  proof  in  respect  of,  85. 

comparative,  376. 

constituent  elements  of,  77. 

doubts  relevant  to,  85. 

estoppel  by  infringer  to  deny,  85. 

in  designs,  77. 

in  respect  of  infringement,  376. 

may  reside  in  beauty,  80. 

must  be  stated  in  declarations,  424. 

necessary  to  patentability,  77. 

necessary  to  whatever  is  claimed  to  negative  novelty,  65. 

negatived  where  function  is  absent,  78. 

negatived  where  function  is  fraudulent,  81. 

negatived  where  function  is  alwaj's  evil,  81. 

not  negatived  by  mere  imperfection,  79. 

patents  prima  facie  evidence  of,  85. 

performance  of  specified  function  necessary  to,  78. 

want  of,  how  pleaded  in  actions  at  law,  448. 

want  of,  how  pleaded  in  actions  in  equity,  601. 

want  of,  how  proved,  511. 

when  functions  are  thought  by  some  to  be  good,  and  by  others 

to  be  evil,  83. 
where  functions  sometimes  work   good  and  sometimes  work 

evil,  82. 
where  primary  function  is  good,  and  ultimate  function  is  evil,  84. 

Validity 

assignor  estopped  to  den.y,  469. 


INDEX  1097 

(The  references  are  to  the  sections) 

Validity — (Continued.) 

defendant's  admission  of,  when  foundation  of  right  to  prelimi- 
nary injunction,  673. 

letters  patent,  prima  facie  evidence  of  their  own,  491. 

negatived  in  eighteen  ways,  441. 

presumption  of,  how  overcome,  491. 

reissues  prima  facie  evidence  of  their  own,  492. 

special  presumption  of,  necessary  to  preliminary  injunction, 
665. 

warranty  of,  283,  284. 

Venue 

how  laid  in  declarations,  422. 

of  suits,  389. 

of  suits  against  aliens,  389. 

Verdicts 

in  patent  cases,  538. 

Wallace,  Judge 

opinion  of,  on  abandonment  of  patents,  107. 

opinion  on  bills  to  restrain  speech  and  the  press,  585a. 

Warning  Against  Infringement 

by  plaintiff  to  defendant's  customers,  when  enjoined,  705. 

Warranty 

of  title,  282. 

of  validity,  283,  284,  307. 

of  validity  of  license,  307a. 

Washington,  Justice 

opinion  of,  on  abandonment  of  patents,  106. 
opinion  of,  on  jurisdiction  of  State  courts,  380. 

Wheeler,  Judge 

opinion  of,  on  amendments,  138. 
opinion  of,  on  public  use,  95. 


|()<)X  INDEX 

(The  references  are  to  the  sections) 

Witnesses 

fees  of,  548. 
in  interferences,  14U 
to  specifications,  121. 

to  want  of  novelty,  need  not  be  named  as  such,  in  notices  of 
special  matter,  444. 

Woodruff,  Judge 

opinion  of,  on  mode  of  operation,  345. 

Woods,  Judge 

opinion  on  bills  to  restrain  speech  and  the  press,  585a. 

Workmanship 

distinguishable  from  skill,  27. 

Writs  of  Error 

carrying  cases  from  District  Courts,  to  Circuit  Courts  of  Appeals, 

550. 
carrying  cases  from  Supreme  Court  of  District  of  Columbia  to 

Court  of  Appeals  of  District  of  Columbia,  and  thence  to 

Supreme  Court  of  United  States,  550. 
function  of,  550. 
in  qui  tarn  actions,  334. 
where  cases  are  tried  by  judges  without  juries,  540. 

Wrongs 

classification  of,  411. 

of  infringement,  where  treated  in  this  book,  378. 


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